What happens in Vegas does not necessarily stay in Vegas. Sometimes it has repercussions in upstate New York. Such was the recent ruling by the U.S. Patent and Trademark Office, which denied registration of the trademarks Las Vegas Golden Knights and Vegas Golden Knights to the newest National Hockey League franchise, due to their similarity to Golden Knights of the College of Saint Rose, a mark owned by a small college in Albany.

The Vegas Golden Knights, set to begin NHL play later this year, sought registration of its marks for clothing and “entertainment services, namely professional ice hockey exhibitions.” In November, the team unveiled its nickname and logo depicting a knight’s helmet. Demand for team merchandise has been strong, and the club expected sales to grow heading into its debut season.

The USPTO’s refusal of the trademark applications, however, threatens to undermine the team’s marketing momentum. Despite assurances from both the league and franchise that they do not intend to change the team’s name, several hurdles must now be overcome before the club can obtain its desired marks. Specifically, the NHL team must convince the USPTO’s examining attorney that its marks will not cause a likelihood of confusion with the school and its merchandise.

The focus of the USPTO’s analysis in denying registration was on the words Golden Knights, which it deemed the dominant portion of both the registered and applied-for marks. The examiner gave little weight to the club’s use of the terms Vegas and Las Vegas before Golden Knights, concluding that such terms are geographically descriptive and therefore “typically less significant or less dominant when comparing the marks.” Because the marks would be used for both collegiate and professional sports “played at the same large arenas for the entertainment of the same class of consumers,” the USPTO concluded that consumer confusion was likely, thus precluding registration of the hockey team’s marks.

History Of Sharing

The USPTO’s ruling was unexpected and curious, given the long history of sports franchises sharing team names. For more than 30 years, the baseball and football New York Giants shared a name and even played in the same stadium, the Polo Grounds in upper Manhattan. Likewise, the baseball and football St. Louis Cardinals shared the spotlight in the Show Me State for nearly three decades. Even after the baseball Giants departed for San Francisco and the football Cardinals resettled in Arizona, each kept its original name. Today, one would be hard pressed to find consumer confusion for the baseball teams and their like-named football counterparts.

Even here in our own backyard, South Florida, we find instances of sports teams, in our case college and professional, sharing monikers. The University of Miami was unfazed when the NHL Hartford Whalers relocated to North Carolina in 1997 and was renamed the Carolina Hurricanes. And since 1993, the Florida International University Golden Panthers have shared their name with the NHL’s Florida Panthers, who played in downtown Miami for five years before heading north on I-75 to Broward County in 1998. In both instances, the professional and collegiate teams have peacefully coexisted with no known consumer confusion.

The long history of name sharing among sports teams strongly suggests that the Vegas Golden Knights will eventually obtain registration of its marks, despite the USPTO’s initial misgivings. The team has stated that it intends to file a response to the examining attorney’s office action, disputing the latter’s finding of likely consumer confusion between the hockey team and the College of Saint Rose. The NHL club will assuredly contest the USPTO’s dismissal of its use of Vegas and Las Vegas in its marks as distinguishing features. The reality is that, in sports, a city or state preceding a team nickname provides much more than mere geographic designation. The city or state becomes very much a part of the team name and identity. Consumers are as unlikely to confuse the Vegas Golden Knights with the Golden Knights of Saint Rose as they are to confuse Las Vegas with Albany.

And if all else fails, the hockey team may sign a formal coexistence agreement with the college, something that has been done in the past when similar issues have arisen. The College of Saint Rose is unlikely to resist such overtures from the NHL club since the enhanced visibility of the hockey team will assuredly help the college’s name recognition and merchandise sales.

Despite the USPTO’s denial, the Vegas Golden Knights will therefore battle on, fighting to keep its name and logo. Things would certainly be easier had a different examining attorney been assigned to the marks, one who placed greater emphasis on the history of name sharing in American sports. Unfortunately, in rolling the dice with its trademark applications, the Vegas hockey team came up snake eyes, drawing an examiner who was less than sympathetic to its cause. But the club will have several additional rolls before it leaves the table.