On December 8, 2016, ESPN’s website ran with the scandalous headline “Patent office denies Golden Knights trademark” regarding the new Las Vegas NHL franchise’s recently chosen moniker.[1] The article subsequently provided a detailed analysis of all the supposed ways in which “Golden Knights” allegedly could not be a trademark that belonged to the NHL team. As you may have gathered, I am writing this article to clarify that misconception.

There are numerous statements and implications in that article that are dangerously misleading. Trademark law is quite nuanced. But ESPN continues to attack it with a sledge hammer. If nothing else, it provides me a good opening to discuss some of these nuances in trademarks and how they may apply to professional and college sports teams’ nicknames.

Trademark v. Trademark Registration

First, and most importantly, ESPN’s article implies that the Las Vegas’ hockey team does not have a trademark for “Golden Knights.” This is quite likely not correct. As we have covered here before, trademark rights accrue the moment a mark is used in commerce and the public is able to associate that mark with the source of particular goods or services. A trademark is “a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.” While, a service mark is the same as a trademark, “except that it identifies and distinguishes the source of a service rather than a product.”[2] That is it. That is all it takes to be a trademark.

Why the confusion? Well, ESPN appears to have once again conflated “trademark” with “trademark registration.” The NHL franchise appears to have at least four separate trademark applications on file with the United States Patent and Trademark Office (USPTO) for some variation of “Golden Knights.”[3] The listed owner for each of these applications is Black Knight Sports and Entertainment, LLC, which is a Delaware corporate entity. Black Knight Sports almost certainly owns a current, existing trademark in the term “Golden Knights” for all uses in association with professional hockey exhibitions and the goods and services that flow from that.

Naturally, however, the entity wants a registration with the USPTO to certify these trademark rights at the federal level. There are many benefits that come with having a federal trademark registration, not the least of which is notice to consumers and nationwide rights that might reach beyond current geographic uses. But the lack of a registration does not mean that existing trademark rights go away. The Washington Redskins will still sue you if you try to use that name without permission. And they would win. Even though the REDSKINS mark is currently “canceled.”

With regard to the Golden Knights trademark application, ESPN also appears to have jumped the gun a bit on its reporting. While, yes, the USPTO has initially denied a trademark registration to Black Knights Sports for “Golden Knights” in the requested classes of goods and services, this was only the initial office action that denied registration. As a trademark attorney, I can represent that nearly every trademark application receives at least an initial denial from the USPTO. It may be for something trivial like the trademark examining attorney needing clarification on geographical terms or a statement that a term does not have a specific meaning in another language. These are often quickly resolved and a registration can issue thereafter – but it is first “denied” as part of the application process. One of the individuals interviewed even spoke to this fact and used a clever sports reference to summarize this point – “It’s only the first period.” The Black Knights Sports representative even stated that this is a “routine matter.” There are still potential responses the applicant can provide that can clarify any confusion and allow a trademark registration to subsequently issue.

Patent v. Trademark

This is most likely me and my personal pet peeve, but it is quite disconcerting to see ESPN casually interchange the term “trademark” with “patent” (or “copyright”), as these are different legal terms with vastly different meanings and applications.

On multiple occasions, ESPN referred to “the Patent office” as the entity that denied the Golden Knights trademark application. While this is true in a roundabout fashion, it is sloppy language. While the colloquial use may be well known, too many people confuse the terms, so ESPN should refer to it as the Trademark Office, or at least refer to it by the acronym – the USPTO. For it is the United States Patent and Trademark Office. Shortening the name to “the Patent office” to address a trademark matter or issue is nothing short of lazy.

It may also be noteworthy that the United States extends rights to patents and trademarks in different ways. Patent rights emanate directly from the U.S. Constitution – Article I, Section 8 – “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Trademark rights, meanwhile, are indirectly derived through the Commerce Clause. In fact, Congress passed the 1881 Trademark Act after the Supreme Court struck down Congress’ attempt to legislate trademark rights through the patent and copyright clause cited above.

Yes, this is a long way of saying that, legally speaking – semantics matter. A lot.

How Does This Apply to the Sports Teams’ Nicknames?

There are many sports teams named “Wildcats.” There are also many teams named “Tigers.” There is a professional baseball team called the “Giants” and there is also a professional football team with the same name. They even used to play in the same city! To suggest that the baseball “Giants” (re-named in 1886) senior existence means that the New York Giants in the NFL do not have a trademark in “Giants” is rather absurd, right? Precisely… they are all trademarks.

Along these lines, the ESPN article cited to other prior uses of the term “Golden Knights,” including the College of Saint Rose in New York. This particular use was cited by the USPTO in its recent office action denial and it refers to the registration owned by the College of Saint Rose dating back to December 2006 (with a date of first use of January 2002).

ESPN also noted that Clarkson University in New York has a hockey team named “Golden Knights.” Unfortunately, ESPN also said that Clarkson University “has not trademarked the name” – which is manifestly wrong on multiple levels. As discussed above, Clarkson University does have a trademark for this nickname, but it is currently only a common law trademark limited to its geographic uses. Also, “trademark” should rarely be used as a verb. The application process with the USPTO does not bestow “trademark” status on a particular mark. There is no growth process for going from non-trademark status to trademark status. Instead, picture it like an immediate phase change in physics – the moment a mark is used in commerce it is instantly elevated to a trademark. Furthermore, the USPTO does not even have the authority to confirm or deny common law trademark rights – it can only decide whether a mark is entitled to a federal registration, which is an entirely different set of standards.

ESPN also ignored, overlooked, or is not aware of the availability of “consent to use” and “concurrent use” agreements between trademark owners and the weight that is afforded to them. This is an agreement between a prior trademark registrant and the new trademark applicant whereby the parties agree that the two concurrent uses of the marks would not result in consumer confusion. This could be based on a distinction as simple as “our mark is for a hockey team, not a basketball team.” Such an agreement is evidence that can be presented to the USPTO examining attorney to overcome any objections to registration based on allegations of a “likelihood of confusion.”

If the Las Vegas NHL franchise is able to acquire such consent from College of Saint Rose and also Clarkson University, this may assist in pushing the application process forward – though it is not a guarantee as the USPTO may conduct its own analysis regarding whether consumers are likely to be confused, even if the trademark owners agree otherwise.

At the end of the day, this is 1,400 words that could have instead just been “ESPN rushed to judgment on this particular issue – the Las Vegas Golden Knights trademark rights are not dead.” That would have let ESPN off the hook for lazy journalism, however. And where is the fun in that?

[1] ESPN has since modified the headline and updated certain terminology within the article. I would like to think my comments had a little something to do with that.

[2] https://www.uspto.gov/trademarks/basics/trade_defin.jsp

[3] U.S Trademark App. Nos. 87147265, 87147239, 87147236, and 87147269