Ah, hockey. The great Canadian pastime involving cute guys, hitting a little rubber disc around the ice, and plenty of fighting – what’s not to love? Speaking of fighting, there’s a new hockey brawl brewing; and while name-calling is involved, it’s likely not the kind of fight you’re used to. This one involves the Vegas Golden Knights, the newly formed NHL expansion team for the Las Vegas area, and the Department of the Army, whose parachute team name is “Golden Knights” – you might be starting to see the problem here.
Back in August 2017, Black Knight Sports and Entertainment, LLC (the owner of the Vegas Golden Knights team) filed an “application to register the mark VEGAS GOLDEN KNIGHTS …for ‘[e]ntertainment services, namely, professional hockey exhibitions’”. The Department of the Army was none too happy, and filed a Notice of Opposition to this application on January 10, 2018. (Side note: a Notice of Opposition is a filing that provides an avenue for one party to “prevent registration of another party’s trademark” based on the belief that “he will be damaged by the registration of [the] mark.”) Skating up to the play, the Army cited multiple bases for opposing the mark, including: likelihood of confusion; priority in the mark; dilution (by blurring); false suggestion of a connection with persons, living or dead, institutions, beliefs, or national symbols, or brings them into contempt, or disrepute”; and, common law trademark rights in the team’s proposed color scheme. That’s quite a mouthful, so let’s break each of these down:
Likelihood of confusion:
Pursuant to Section 2(d) of the Trademark Act, a mark may be refused registration where it contains or comprises a mark already registered with the USPTO, such that the proposed mark, when used on or in connection with the goods of the person applying for the mark, has the potential to cause confusion, mistake, or deception. When assessing whether likelihood of confusion exists, the focus is not on whether people may confuse the marks, but instead “whether the marks will confuse people into believing that the goods…emanate from the same source”. Of the 13 federal courts of appeal, each has “their own test for evaluating whether a likelihood of confusion exists between two trademarks,” and while they are not identical, “most of them are substantially similar and use many of the same [non-exclusive] factors.” As the current dispute is taking place at the opposition phase, the factors established by the Federal Circuit in the seminal DuPont case would control here.
These 13 factors from In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973) are as follows: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use; (3) The similarity or dissimilarity of established, likely-to-continue trade channels; (4) The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing; (5) The fame of the prior mark (sales, advertising, length of use); (6) The number and nature of similar marks in use on similar goods; (7) The nature and extent of any actual confusion; (8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion; (9) The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark); (10) The market interface between applicant and the owner of a prior mark; (11) The extent to which applicant has a right to exclude others from use of its mark on its goods; (12) The extent of potential confusion, i.e., whether de minimis or substantial; and (13) Any other established fact probative of the effect of use.
From the similar black+gold/yellow+white color scheme, to the “marks sharing identical dominant words and commercial impressions,” and being confusingly similar in “sound, meaning and appearance,” to the closeness of the relationship of the services offered (namely, sporting events), the Army addresses many of these factors in their opposition, insisting that the Vegas Golden Knights proposed mark would result in likelihood of confusion.
In addition, the Army also pointed to some statements made on the part of Black Knights Sports and Entertainment, which indicated a desire to be associated with the Army. In fact, Black Knights Sports and Entertainment originally wanted to call the team the “Black Knights,” which is the name of the United States Military Academy’s sports teams, but “‘a number of factors, including concern from Army officials, kept [them] from using the name.’” They even wanted to have the Golden Knights parachute team attend one of the ceremonies, but that didn’t work out either.
In response to the opposition, Black Knight Sports and Entertainment (somewhat cheekily) responded that “the two entities have been coexisting without any issues for over a year (along with several other Golden Knights trademark owners) and [they] are not aware of a single complaint from anyone attending [the Golden Knight’s hockey] games that they were expecting to see the parachute team and not a professional hockey game.” Feisty.
Priority of the mark and common law rights:
Priority of use is a fancier way of saying the first person to use the mark gets the rights to the mark. Under common law, “trademark rights within a certain territory are based on priority of use of a mark within that territory” and “[t]he first user of a mark generally takes priority over all subsequent users with respect to use of the mark in that market.” As such, this first user (the “senior user”) has priority over the mark by a subsequent user (the “junior user”) within the geographic area in which the senior user was using the mark in commerce, and even sometimes into the senior user’s “zone of natural expansion.”
According to Army’s opposition, it contends it is the senior user of the mark at issue, claiming that “[s]ince at least 1969, [Army] has used and continues to use the [Golden Knights] marks in connection with its U.S. Army Parachute team known as the Golden Knights, public relations for the U.S. military and recruiting for the U.S. Army.” In addition, Army claims to own common law rights in the color scheme black+gold/yellow+white.
We’ll have to wait and see what Black Knight Sports and Entertainment’s response (if any) will be to this point. They may try to claim that while Army has the common law priority over the name in the New York area, or even the entire east coast, this does not expand to Las Vegas or the surrounding area. They may also claim that the color scheme is too generic to be able to be protected, regardless of how long and in how many different places these colors have been used.
Dilution by blurring:
The Federal Trademark Dilution Act “creates a federal cause of action to protect famous marks from unauthorized use; to prevent others from trading upon the goodwill and established renown of such marks; and to prevent dilution of the distinctive quality of such marks.” There are two basic types of dilution: blurring and tarnishment, and each requires that a mark be famous (that is, it must be “widely recognized by the general consuming public of the United States”) prior to bringing a claim under this cause of action. Dilution by blurring “occurs where the distinctiveness of a famous mark is impaired by association with another similar mark or trade name” (these marks do not need to be within the same or similar categories of goods or services). There are several factors to be considered when determining whether dilution by blurring has occurred, including: “the degree of similarity between the mark or trade name and the famous mark; the degree of the famous mark’s inherent or acquired distinctiveness; the extent to which the owner of the famous mark is engaged in substantially exclusive use of the mark; the degree of recognition of the famous mark; whether the user of the mark or trade name intended to create an association with the famous mark; and any actual association between the mark or trade name and the famous mark.”
In its opposition, the Department of the Army declares that its “mark is famous and became famous before the filing date of [the Vegas Golden Knights mark],” seemingly trying to establish the threshold requirement for dilution by blurring (namely, that the mark is famous). While we will have to wait for a full analysis on this claim, one factor that may end up working against Army is the other registrations for the “Golden Knights” name, including for the College of Saint Rose. In fact, “the USPTO issued preliminary refusals to the team for its applications to register ‘LAS VEGAS GOLDEN KNIGHTS’ and ‘VEGAS GOLDEN KNIGHTS’ for clothing due to a likelihood of confusion with the registered mark ‘GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE’ in stylized print, also for clothing.” These other uses could have an effect on the substantially exclusive use of the mark factor, but this may not necessarily be the deciding factor for either party.
Under Section 2(a) of the Trademark Act, marks may be refused on the basis that the mark “falsely suggest[s] a connection with persons, living or dead, institutions, beliefs, or national symbols.” In order to “establish that a proposed mark falsely suggests a connection with a person or an institution, it must be shown that: (1) the mark is the same as, or a close approximation of, the name or identity previously used by another person or institution; (2) the mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution; (3) the person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and (4) the fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with the person or institution would be presumed.”
The Army’s concern here is that “both parties use their marks in connection with sporting events, thus, [Black Knight Sports and Entertainment’s] services are likely to be perceived by the public as sponsored by, affiliated with, approved by or otherwise related to [the Department of the Army.]” In rebuttal, Black Knight may come back and question why they are being singled out when other teams are using the “Golden Knights” mark (as mentioned above), or they may try to draw some distinction between the types of sporting events being put on by the respective parties to show there would be no public confusion.
(Fun Fact: the 2(a) provision was altered in light of the Matal v. Tam decision)
So, now that we learned a lot about trademark law, what happens now? For the time being, we need to be patient — Black Knight Sports and Entertainment has until February 19, 2018 to respond to the opposition. Translation: the gloves are off but nobody is in the penalty box…yet.
Photo Courtesy of SI.com