Trade marks in US sports: A review of the Vegas Golden Knights & Milwaukee Bucks applicationsRyan Hilbert
Trademark law is notoriously subjective. Courts have long recognized that likelihood of confusion is frequently a disputed issue upon which reasonable minds may differ. Therefore, it is not entirely uncommon for an examiner at the U.S. Patent & Trademark Office to tacitly conclude during the examination process that an applied-for mark is not confusingly similar to another mark, only to have that same applied-for mark eventually be denied registration after it is successfully challenged by a third party who demonstrates the exact opposite. This dichotomy can often make trademark prosecution in the U.S. incredibly complex.
The subjective nature of trademark law and its effects was on full display in early December 2016 in a pair of announcements about the NHL’s newest franchise, the Vegas Golden Knights, and a dispute between the NBA’s Milwaukee Bucks and the popular German liqueur-maker, Mast-Jagermeister. In the first, it was announced on December 8 that the Vegas Golden Knights’ application to register its team name as a trademark had been refused by the U.S. Patent & Trademark Office because the mark was deemed confusingly similar to a mark previously registered by the College of Saint Rose in Albany, New York. In the second, it was announced one day later on December 9 that Jagermeister had formally opposed the Milwaukee Bucks’ application to register the team’s re-designed logo on the ground that it was confusingly similar to Jagermeister’s deer logo.
The article examines – and juxtaposes – the facts behind each of these situations in more detail. In doing so, it also demonstrates that even the simplest-seeming trademark matter can actually be incredibly complicated.
The Vegas Golden Knights
On August 23, 2016, Black Knight Sports and Entertainment LLC, the company behind the NHL’s newest franchise, filed two applications for LAS VEGAS GOLDEN KNIGHTS and two applications for VEGAS GOLDEN KNIGHTS. Both applications were for word marks in standard characters without any claim to any particular font, style, size, color or design. One application for each mark was for various apparel while the other was for “entertainment services, namely, professional hockey exhibitions.” These were the applications that were the subject of the announcement on December 8.
As explained above, each of Black Knight’s applications was refused registration by the U.S. Patent & Trademark Office on the ground that the applied-for marks are confusingly similar to the following mark owned by the College of Saint Rose:
There are two fundamental factors courts and the U.S. Patent & Trademark Office typically consider when determining whether two marks are confusingly similar: the similarity of the marks and the similarity of the goods and services. In this case, the Examiner at the U.S. Patent & Trademark Office determined that the parties’ marks appeared similar because both featured the dominant term “GOLDEN KNIGHTS” and any additional wording or design element in the marks was insufficient to alter the overall commercial impression created by those terms.
The Examiner also determined that the parties’ goods and services were similar because there was sufficient overlap between the goods in the College of Saint Rose registration – which consisted of “[c]lothing, namely, shirts, t-shirts, jackets, shorts, pants, caps, hats, baseball hats, sweatshirts, and golf shirts” – and the broad range of apparel for which Black Knight was seeking protection.
As to Black Knight’s hockey-related services, the Examiner determined that consumers were likely to confuse these services with the “entertainment services in the form of intercollegiate sports exhibitions” in the College of Saint Rose registration because, among other reasons, “[c]ollegiate sports and professional sports are of a similar nature, both often televised, played at the same large arenas for the entertainment of the same class of consumers.”
Importantly, where the services in a registration are broadly described, the U.S. Patent & Trademark Office will presume that such a description includes all services of the type described. (This is one of the fundamental differences between the examination process and an evaluation of an infringement claim in federal court where more of a real-world analysis is conducted.) The Examiner relied on this principle to state that the College of Saint Rose’s services necessarily included all sports played at the collegiate level, including hockey, and thus cited this as another reason why the parties’ services were confusingly similar. This argument may be difficult to eventually overcome, even if, as expected, Black Knight demonstrates that the College of Saint Rose does not have a hockey team.
Though not reported by the press, it is worth noting that the College of Saint Rose registration was not the only mark cited against Black Knight’s applications. The Examiner said that Black Knight’s applications for hockey-related services could also be rejected should a pair of other pending applications ultimately proceed to registration. The first application, which was filed on behalf of Middle Georgia State University, is depicted as follows:
The second application, which is owned by the University of Central Florida, is depicted as follows:
Tellingly, each of these applications is currently facing its own set of hurdles, having also been preliminarily refused registration on the ground that each applied-for mark is confusingly similar to yet other KINGHT-formative marks owned by Knights Baseball, LLC of Minor League Baseball. Among such marks is the following:
The Examiner also said that Black Knight’s applications for apparel could be rejected should an application for the word mark LAS VEGAS BLACK KNIGHTS for various apparel mature to registration. As with the other applications, however, this application, which is owned by an individual named Charles Bezak in Las Vegas, Nevada, is not without its challenges. Not only has it already been rejected based on the NCAA’s Army’s registration for the word mark BLACK KNIGHTS, it faces rejection should an unrelated pending application for the word mark BLACK KNIGHT mature to registration. Even if Mr. Bezak overcomes these hurdles, the timing of his application is suspicious, having been filed on February 6, 2015, only three days after a news conference at which Las Vegas officials first mentioned the possibility of calling the team the “Black Knights”. If necessary, Black Knight may be able to capitalize on this information to successfully challenge any ensuing registration.
There are several ways Black Knight may proceed in response to the Examiner’s decision. First, it can try to convince the Examiner to withdraw the refusal by arguing that there is no likelihood of confusion with the mark in the College of Saint Rose registration. For example, Black Knight can claim that its marks create a different commercial impression than the design mark owned by College of Saint Rose. Black Knight can also argue that, just as countless other college and professional sports teams use the same or similar team names without consumer confusion, so, too, should that be the case here. This was certainly the argument most commonly raised by sports law experts who were quoted in articles on the subject. It also appears to be the approach the NHL intends to take. Indeed, in a statement released on December 7, 2016, the NHL stated:
There are countless examples of college sports teams and professional sports teams with coexisting names, including Vegas Golden Knights and Clarkson Golden Knights, UCLA Bruins and Boston Bruins, U of Miami Hurricanes and Carolina Hurricanes, etc. We will plan on making these arguments and others in our detailed written response to the office action which must be filed by June 7, 2017.
A second way Black Knight can proceed is by trying to enter into what is called a “coexistence agreement” with the College of Saint Rose. A coexistence agreement is an agreement under which each party recognizes the right of the other to continue using an identical or similar mark, usually subject to certain restrictions.
In this case, Black Knight and College of Saint Rose could agree that there is no likelihood of confusion between their respective marks, and that they will use commercially reasonable efforts to address any instances of confusion that might arise. In addition, the parties might also agree that Black Knight will never use its mark in connection with collegiate sports, except for perhaps hockey, and that the College of Saint Rose will never use its mark in connection with professional sports, including hockey. Though not dispositive, a suitably detailed coexistence agreement is typically very persuasive in convincing an examiner to withdraw a refusal.
It has already been reported that Black Knight entered into a coexistence agreement with Clarkson University concerning the latter’s GOLDEN KNIGHTS mark. It was also reported that Black Knight entered into a coexistence agreement with the University of Central Florida – whose team name was previously the “Golden Knights” before it re-branded in 2007 to drop the word “Golden” in favor of simply becoming the “UCF Knights.”
Having already entered into two coexistence agreements, it is likely Black Knight and the College of Saint Rose have already had discussions about entering into a third. Indeed, even if Black Knight had strong arguments against the Examiner’s refusal, a detailed coexistence agreement would significantly increase Black Knight’s chances of success.
The deadline for Black Knight to address the issues above is June 7, 2017 – i.e., six months from the issuance of the U.S. Patent & Trademark Office’s notice. However, if the foregoing is any indication, it will likely be well after this date before Black Knight will be able to register its marks, if at all. Even so, there is no question that Black Knight is committed to moving forward with VEGAS BLACK KNIGHTS. In addition to the press release above, NHL deputy commissioner Bill Daly said:
"We consider this a routine matter and it is not our intention to reconsider the name or logo of this franchise. We fully intend to proceed as originally planned, relying on our common law trademark rights as well as our state trademark registrations while we work through the process of addressing the question raised in the federal applications."
The Milwaukee Bucks
Unlike the situation above, the dispute between the NBA’s Milwaukee Bucks and Jagermeister was relatively simple and straightforward in that it only involved two parties. On April 3, 2015, Milwaukee Bucks, LLC filed eleven applications for its re-designed logo covering a variety of goods and services. This logo is depicted as follows:
Importantly, unlike the situation above, the Examiner assigned to review the Bucks’ applications did not find any marks that could be considered confusingly similar to the Bucks’ new logo. This included the following design marks owned by Jagermeister.
Having found no objections to registration, the Examiner then approved the Bucks’ marks for publication. Once a mark is published, any party that believes it may be damaged by the registration of the mark has thirty (30) days to either formally oppose the mark or request an extension of the deadline. The longest a party can unilaterally extend the deadline is ninety (90) days. However, at the conclusion of that period, the parties can mutually request one more additional extension of up to sixty (60) days (for a total of 180 days – or six months – from publication). Typically, the only time two parties will agree to a final 60-day extension is if they are actively engaged in settlement negotiations.
In this case, seven of the Bucks’ applications were published in June 2016 and the remaining four applications were published approximately one month later. As the 30-day period to oppose each application drew to a close, Jagermeister unilaterally sought to extend the deadlines by the maximum period allowed – i.e., ninety (90) days. As that period drew to a close, the Bucks and Jagermeister then mutually agreed to extend the deadlines by another sixty (60) days. The new deadline by which Jagermeister would have to oppose the first seven of the Bucks’ applications was mid-December 2016, with the deadline to oppose the remaining four applications coming in mid-January 2017.
In mid-December 2016, Jagermeister formally opposed the seven earlier-published Bucks applications based on Jagermeister’s rights to its own deer logo. These are the proceedings that were the subject of the December 10 announcement. Though many in the press seized on this information to suggest that the Bucks might be in danger of losing the team’s rights to its re-designed logo, this is inaccurate.
In this case, the timing, nature and history of the dispute strongly suggests that the parties are actively discussing settlement, likely in the form of a coexistence agreement. Indeed, a source familiar with Jagermeister's filing told ESPN's Darren Rovell that the company and the team had been working together, and that the filing was a mere formality. Negotiations of this type can not only help shape current behavior, they can address potential future uses that are more likely to create consumer confusion.
From a trademark perspective, there was nothing unusual about either of the situations above. In fact, situations such as these are not even unique in sports. Some may recall that the NFL’s Jacksonville Jaguars once had to abandon their original team logo in response to a federal trademark lawsuit brought by Jaguar Cars Ltd.
But as the above examples demonstrate, the notoriously subjective nature of trademark law can make what may appear to be the simplest name change or selection, or logo re-design, much more complex than anticipated. It is always a good idea to have an experienced trademark lawyer help you navigate through those complexities.
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- Tags: Basketball | Ice Hockey | Intellectual Property | National Basketball Association (NBA) | National Hockey League (NHL) | Trademarks | United States of America (USA)
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About the Author
Ryan Hilbert is an attorney with Holley & Menker, P.A. where he practices in the areas of intellectual property prosecution and counseling, licensing and litigation, particularly in the sports and entertainment industries.