Las Vegas Sun

July 17, 2018

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Golden Knights trademark effort gets a win, but OT still needed


L.E. Baskow

Marc-Andre Fleury of the Golden Knights looks for a few new hats during media availability for new players in the official team store, The Armory, at the T-Mobile Arena on Thursday, June 22, 2017.

The war continues, but the Vegas Golden Knights won the most important battle in their trademark fight with the federal government.

The United States Patent and Trademark Office (USPTO) last Friday reversed its initial denial of the team’s application to trademark the Vegas Golden Knights name for use in game action. An eventual final approval clears the team’s name for use in most day-to-day purposes.

“We’re excited about that,” Golden Knights President Kerry Bubolz said Wednesday. “That was a very positive ruling.”

The ruling can be viewed as positive because it prevents the kind of publicity crisis that accompanies a professional sports franchise naming itself and not securing the rights to that name. While owner Bill Foley never faced serious danger of needing to change his preferred name, affirmation from the feds lessens the chance of legal fights down the road, according to trademark attorney Patrick Jennings of Pillsbury Law’s Washington, D.C., office.

“I would say that’s the more important of the two in the short-term,” Jennings said. “Maybe long-term that’s a different story.”

The long-term question remains because the USPTO upheld its denial of a second application giving the team the right to the Golden Knights name and likeness for apparel and related uses. The feds issued a suspension of the process that could linger because the rejection is based upon other suspended applications dating back to at least 2000.

“They’re not going anywhere anytime soon,” said Jennings, who owns extensive experience working on sports applications. “My guess is unless the league or the team does something about the earlier filed applications, those things are going to be suspended for who knows how long.”

The previously suspended applications do not appear close to a resolution, Jennings said, giving the Golden Knights no clear path forward with the government.

“They’ve got a whole bunch of problems,” said Jennings, a former USPTO examiner. “Here, you’ve got three or four steps. It’s kind of the worst worst-case scenario if you’re itching to resolve these things in a short period of time.”

Don’t expect Golden Knights T-shirts to be pulled from store shelves though. The team does not need an approved trademark application to own some rights to its mark.

“You can enforce an unregistered mark, but it’s always a lot more difficult when a mark is not registered,” Jennings said. “That’s particularly the case when you’re trying to take something down online.”

Jennings believes the first approved application of the Golden Knights mark might give the team enough legal cover to defend itself against any potential infringement in the apparel area.

“Once those are published and allowed and registered, they could enforce using those more than likely,” Jennings said.

The Golden Knights plan to review options for addressing the suspended application, but nothing in that situation will change their approach as the head toward their October debut in the NHL. Bubolz noted that league attorneys prepared the team’s June response to the initial denial and they continue to lead the process.

“There’s a couple of different parts,” Bubolz said. “We’re pleased with the progress that’s happened to date. That process is going to continue.”

The Golden Knights play their first preseason game in Vancouver, British Columbia, on Sept.17.

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