Is There Room for More Than One Golden Knight in 2018?

The Vegas Golden Knights are having a historic season, three games from winning the Stanley Cup in just their first year in the NHL.  The franchise appears bound for great things, and the story of the Golden Knights is an example of some of the best of sport, bringing the people of Las Vegas together after the horrific October shooting that killed 58 innocent concert goers in the heart of the Vegas Strip.  Yet all is not dekes and biscuits in the basket for the Vegas Golden Knights.  The team is embroiled in a a high-stakes trademark dispute that could potentially force it to change its name.

The team tried to register the trademark “VEGAS GOLDEN KNIGHTS” with the U.S. Patent and Trademark Office in late 2016.  The U.S. Army opposed the registration early this year, contending that the NHL team’s mark would be confused with its own “GOLDEN KNIGHTS” mark used in connection with the Army’s parachute team of that same name.  The Army has been using the “GOLDEN KNIGHTS” name in various ways since 1969.  Not only are the names similar, but both entities use black and gold and yellow and white color schemes.  In addition, the Army’s West Point hockey team styles itself the “Black Knights” and employs a black and gold scheme and a knight logo similar to that of the NHL franchse.

Two things strike me about this trademark dispute.  First, professional sports franchises are big business and it is a surprise that these rights weren’t cleared long before the first puck dropped in the current NHL season.  I just got back from attending the International Trademark Assocation’s annual meeting.  Ten thousand IP lawyers from around the world participate in this event.  A large part of the meeting is devoted to figuring out how to carefully select and protect trademarks.  These lawyers, in conjunction with an array of vendors selling sophisticated and expensive databases of business names, are handsomely paid to comb the globe to make sure that their client doesn’t accidentally invest in a brand name already being used by someone else.

But that’s not what happened here.  The Knights seemed to willing to jettison due diligence based on the majority owner’s personal preference for this particular team name.  Bill Foley is the majority owner of the NHL’s Golden Knights and a West Point graduate.  He specifically wanted the Knight name and color scheme already used by the Army for his team.  In fact, the use of a similar name, logo, and colors by the Army was clearly on Foley’s radar yet he and the NHL still marched ahead.  He even told a Las Vegas newspaper that he “wanted to have the Golden Knights [parachute team] drop in for the [team’s opening] ceremony, but it got kind of complicated.”

I doubt that we’ll actually see the end of the “Las Vegas Golden Knights”—that name has become just too valuable, the goodwill acquired during this magical season too rich to abandon.  (Though stranger things have happened.  The World Wrestling Federation or “WWF” had to change its valuable name to World Wrestling Entertainment and “WWE” in response to a trademark dispute against the World Wildlife Fund, which also used the WWF initials.)  The parties have until June 23 to work out a deal before it becomes the job of a board of administrative trademark judges to decide whether the Vegas franchise’s activities are likely to confuse consumers.  My guess is that a deal will be reached, but it will cost the Vegas Golden Knights a pretty penny (at least in attorney’s fees).

Second, I taught Trademarks this semester and had multiple students ask me about this case.  Their most common question was whether a government entity like the U.S. Army can assert trademark rights.  They can.  There are some limitations in trademark law on what can be federally registered as a trademark that restrict government (as opposed to private) organizations.  Federal law forbids registration for the “flag or coat of arms or other insignia of of the United States, or of any State or municipality.”  But this provision is strictly construed.  In fact, the U.S. Army and other government entities hold many trademarks.  After 9/11, there was a surge in trademark filings by the U.S. Armed Forces from OOHRAH! for the Marines to SEAL TEAM for the Navy.  This is very different from copyright law, which generally holds that works prepared by officers or employees of the United States government are ineligible for copyright protection.

Some criticize the idea of governmental trademarks, pointing out the danger in allowing the government to use its intellectual property rights to stifle speech involving its signifiers.  Others lament the potential for commercial activity to corrode the meaning of national symbols.  But this is probably not the right case for those concerns to be addressed.  Instead, we just have an owner and a team that got ahead of themselves, both in terms of picking a trademark and in terms of getting to the Stanley Cup their first year in the NHL.


Author: Mark Bartholomew

MBartho

Mark Bartholomew is a professor at the University at Buffalo School of Law.  He writes and teaches in the areas of intellectual property and law and technology, with an emphasis on copyright, trademarks, advertising regulation, and online privacy.  His articles on these subjects have been published in the Vanderbilt Law Review, the George Washington Law Review, the William & Mary Law Review, the Brigham Young Law Review, the Connecticut Law Review, and the Berkeley Technology Law Journal among others.  His book Adcreep: The Case Against Modern Marketing was published by Stanford University Press in April 2017.

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