The NHL’s newest franchise, the Las Vegas Golden Knights (so named for now), is finding out the hard way just how important it is to have a trademark cleared before using it.

I say that, but I refuse to believe that attorneys for an NHL franchise didn’t already know naming their team the Golden Knights would be an issue. In fact I’d say there is a 0% chance that this is a surprise (if it is a surprise someone needs to be fired). I am suprised that the franchise has already been selling apparel  that includes the Golden Knight’s name (NHL store) — if they don’t end up owning this mark, they may also be dealing with infringement allegations.

Here’s the quick backstory. The NHL granted Las Vegas a franchise team. That team mulled over a list of possible names. They settled on the Golden Knights. The Golden Knights filed a trademark application with the USPTO, and to their surprise (or not) a college is already using the Golden Knights as their mascot — and they have a registration for it. The mark is a design mark for GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE (design). The examining attorney at the USPTO, as he should have, denied the franchise’s application under the contention that its likely to cause confusion with the already-registered mark. This is a standard response to a trademark application, and can be quite difficult to overcome. You may be thinking, “what about the ‘College of Saint Rose’ portion?” Yes, that’s important, but it probably won’t be determinative in a likelihood of confusion analysis. Especially because Golden Knights is prominent in the college’s design. 

What can you take away from this? If you’re planning to start a new business, sell a new product, or do something that involves a trademark, the first thing you should do is make sure you have a mark you can actually use. Have an attorney do a search and give you an opinion. A simple search and opinion can save a business thousands of dollars (if not tens or hundreds of thousands). If there is a problem with your mark, either change it or decide that the mark is important enough to your business that you are willing to fight for it. Likely, this is what the Vegas franchise did. They will probably try to argue against likelihood of confusion or come to an agreement with the college. If need be, they may try to buy the registration from the college, if Saint Rose is willing to sell it — it will probably cost a pretty penny. Again, I find it incredibly hard to believe that they chose this name, manufactured a bunch of apparel, filed for trademark registration, and did not know of the conflict beforehand. They’re probably willing to jump through hoops to get their name.

Either way, this is a good lesson: clear your trademark rights before you start using a mark; or at least do it early on so you can change your mark without confusion to your customers, or worse, a law suit. Most businesses don’t have the capital that an NHL franchise has, and dealing with an issue like this can be quite costly. 

Aside from this issue, the US army is fighting the use of Golden Knights (Washington Post), and the University of Central Florida Knights were formerly the Golden Knights, and still appear to have some association with that name (booster club). This should be interesting to follow.