Do you suspect that the Las Vegas Golden Knights and the United States Army might have some sort of affiliation?
This question lies at the heart of a notice of opposition filed Wednesday by the U.S. Department of Army in the U.S. Patent and Trademark Office (a.k.a. the USPTO, the government agency that administers the national trademark registry). Among other points, the Army stresses that the U.S. Army Parachute Team, which over the last 55 years has performed in more than 16,000 shows, has long been nicknamed the Golden Knights—quite unlike the expansion NHL team that adopted the name only 14 months ago. And, for sports and entertainment purposes, the Army has for decades used a color scheme similar to that now employed by said NHL team.
Is it harmless admiration for one service branch of the U.S. Armed Forces? Or is it unlawful copycatting that damages the Army’s brand?
In a brief authored by intellectual property attorney Shari Sheffield, the Army charges that unless the USPTO’s Trademark Trial and Appeal Board—an administrative court within the USPTO—refuses to register the mark “Las Vegas Golden Knights” for the NHL team, the distinctive quality of the Army’s Golden Knights mark will be diluted and consumers of sporting events will be confused.
The pending registration for “Las Vegas Golden Knights” as a mark used for entertainment services/professional ice hockey exhibitions was filed by Black Knights Sports Entertainment last August. Bill Foley, a 1967 graduate of West Point and the principal owner of the Golden Knights, mostly owns Black Knights.
The Army’s argument that it controls the use of “Golden Knights” for sporting events
The Army contends that apparent similarities between the Golden Knights’ marks and Army-affiliated entities go way too far for purposes of trademark law.
“The public,” the Army asserts in the legal filing, “is likely to be confused as to whether the U.S. Government or the Applicant [Black Knights] controls the quality and nature of the services or endorses or sponsors the Applicant’s services.”
To that end, the Army stresses that the phrase “Golden Knights” became famous for sporting events long before a Las Vegas-based NHL team with that same name began play in 2017. In fact, since 1962, the Army has used “Golden Knights” in connection with its official parachute team. Although some might opine that a person skydiving in a parachute isn’t a traditional “sport” like hockey, it certainly requires athletic skill and training, and is often described as an “extreme sport” or an “adventure sport.” For purposes of the law, an official parachute team is likely partaking in a sport. Even if it isn’t, the Army could still have a case: the Army opposes an application for “entertainment services, namely, professional ice hockey exhibitions.” If Army registered its own mark it would likely also be for entertainment or include entertainment services.
For many years, the Army has also used “Golden Knights” for public relations and recruiting purposes. In trademark law lingo, the Army paints a picture of “Golden Knights” as having a “substantial and continuous commercial use” for the service branch.
The Army also highlights public comments made by Golden Knights officials where they admit to trying to connect to the Army. For instance, last July, Golden Knights general manager George McPhee revealed to The Washington Post’s Aaron Torres that the Golden Knights’ color scheme of black, gold, yellow and white was intentionally selected for its similarity to a color scheme used by the Army at West Point. “Bill Foley is a West Point guy,” McPhee noted. “You know his history at West Point. You know about the classmates he had that he lost serving this country. So, those colors mean a lot to us, and will mean a lot to our players. And we’re really proud of the logo. It’s clean, it’s symmetrical, it’s kind of bold and again it stands for something.”
For his part, Foley has openly tried to connect his team’s identity to that of the Army’s Golden Knights. According to a November 2016 article published in The Fayetteville Observer, Foley is quoted as saying, “We wanted to have the Golden Knights drop in for the ceremony, but it got kind of complicated.”
Golden Knights’ response
Under trademark law, the Golden Knights will have 40 days to answer the Army’s notice of opposition (the 40-day clock begins once the TTAB issues a scheduling order, which should come soon).
In the meantime, the team has issued a public relations statement in which it categorically rejects the Army’s assertions:
We strongly dispute the Army’s allegations that confusion is likely between the Army Golden Knights parachute team and the Vegas Golden Knights major-league hockey team. Indeed, the two entities have been coexisting without any issues for over a year (along with several other Golden Knights trademark owners) and we are not aware of a single complaint from anyone attending our games that they were expecting to see the parachute team and not a professional hockey game. That said, in light of the pending trademark opposition proceedings, we will have no further comment at this time and will address the Army’s opposition in the relevant legal forums.
Although this statement is geared for public relations, rather than for legal advocacy, it provides clues as to the kinds of arguments the Golden Knights may provide in their forthcoming legal filing. For one, notice that the team draws attention to “Golden Knights” as a mark that has been subject to registration attempts by other entities. A quick trademark search on the USPTO website confirms that:
From that list, consider the College of Saint Rose in Albany, New York. It successfully registered “Golden Knights” back in 2006 for “educational services, namely providing courses of instruction at the college level; entertainment services in the form of intercollegiate sports exhibitions.” Saint Rose’s athletic teams, which compete in NCAA Division II, are called the Golden Knights. Saint Rose isn’t the only college to name their athletic teams the “Golden Knights”. Fellow New York school Clarkson University, whose men’s and women’s hockey teams compete in Division I, does so as well. But Saint Rose went the additional step to seek and obtain trademark registration. The Las Vegas Golden Knights are very much aware of this Division II school: the USPTO issued preliminary refusals to the team for its applications to register “LAS VEGAS GOLDEN KNIGHTS” and “VEGAS GOLDEN KNIGHTS” for clothing due to a likelihood of confusion with the registered mark “GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE” in stylized print, also for clothing.
Interestingly, it does not appear that the Army formally opposed the use of the Golden Knights for college sports. The NHL Golden Nights might ask why should the Army oppose the use for pro sports when college sports use was OK?
The NHL Golden Knights also emphasize that the team hasn’t received any complaints from customers who bought “Golden Knight” tickets believing they were going to see parachutists jump out of planes only to witness a hockey game instead. The absurdity of that sentence underscores a critical point for the NHL Golden Knights: consumers seem unlikely to confuse a parachute team with a hockey team.
Then again, the Army doesn’t quite argue that consumers will be confused as to whether they will see parachutists or hockey players if they buy “Golden Knight” tickets—it argues that consumers may see the parachutists and hockey players both partake in sporting activities, both play for the same team name and both wear apparel bearing similar colors and logos. From those commonalities, consumers could conclude that there is a relationship between the two Golden Knights teams when in fact none exists.
A panel of three TTAB administrative trademark judges will evaluate the arguments and publish a written decision. This legal process will likely take time. In fact, some opposition filings have taken as long as a couple of years to complete.
This is potentially problematic for the NHL Golden Knights, since the team’s pending trademark registration of “Golden Knights” will be postponed until this legal matter is resolved. Registration would provide the NHL team with exclusive use of “Golden Knights” for “professional ice hockey exhibitions” under federal trademark law. To that end, the team would acquire certain legal protections of considerable economic value. They include an enhanced ability to utilize the U.S. Customs and Border Patrol and the presumption of validity in any federal cases against companies that infringe on the team’s use of Golden Knights.
At the same time, the lack of trademark registration does not compel the Golden Knights to drop the team’s name. Likewise, any contracts in which the team entered remain enforceable, with or without “Golden Knights” being registered under trademark law. The team can also use other legal protections to assert an exclusive use of “Golden Knights” and to protect its brand. For instance, federal and state anti-counterfeiting laws, as well as rulings by judges in state courts, could provide protections.
Alexandra Roberts, a trademarks law professor at the University of New Hampshire School of Law who has written extensively on sports trademark litigation, tells SI.com that the NHL Golden Knight’s registration (through Black Knight) is problematic:
Army asserts that the Black Knight’s registration of LAS VEGAS GOLDEN KNIGHTS for a hockey team is likely to create confusion among consumers and falsely suggest a connection with an important institution: The United States Army. Despite Black Knights’ straw man argument that no one buys tickets for a hockey game and then arrives expecting to see a parachute exhibition, confusion as to source, affiliation, or license are all relevant forms of confusion that would support Army’s opposition. So if you show up at a rink expecting to see a hockey game, but you form an assumption that the team adopted and uses the name “Golden Knights” with Army’s permission, or that the hockey team has some affiliation with the U.S. Army's parachute team or the armed forces, that type of confusion or deception is enough for the USPTO to refuse registration. It’s true that the team can continue to use its name without registration. But if registration is refused, Army’s next step could be a lawsuit seeking an injunction on the same grounds.
At any point, the Army and NHL Golden Knights could reach a settlement. Roberts suggests that a settlement could mean an agreement to change the team name, or it could look more like a coexistence agreement, under which the Black Knights agree to use different team colors, or never use “Golden Knights” without “Las Vegas,” or otherwise modify use to avoid confusion. If no settlement is reached, one side will win and the other will lose before the three-judge TTAB panel. The losing side can appeal to the U.S. Court of Appeals for the Federal Circuit. It can also file a separate case in a U.S. District Court. In other words, the fight over the “Golden Knights” may take years to play out.
Michael McCann is SI’s legal analyst. He is also an attorney and the Associate Dean for Academic Affairs at the University of New Hampshire School of Law, and co-author with Ed O'Bannon of the forthcoming book Court Justice: The Inside Story of My Battle Against the NCAA.