August 3, 2018 

coexistence-agreement
Coexistence Agreement

The Las Vegas Golden Knights (“Golden Knights”) hockey team must be in the running for the feel-good sports story of the year. As an expansion team, they made it all the way to the Stanley Cup finals, making them the first modern-era expansion team from any of the four major sports leagues to win their division in an inaugural season. Despite their success on the ice, behind the scenes there has been an ongoing trademark dispute involving the use of the Golden Knights team name. The U.S. Army (“Army”) had opposed the Golden Knights trademark applications for “Vegas Golden Knights” and “Las Vegas Golden Knights,” respectively, on the grounds that consumers would likely be confused with Army’s parachute team, which has used the Golden Knights name since 1959. To resolve the dispute, the parties entered into a coexistence agreement, allowing them both to continue to use the mark and name “Golden Knights.”

How do coexistence agreements work?

Likelihood of Confusion Between Two Marks

A trademark is a source identifier that assures the quality of the associated goods or services, so that the consumer will not be deceived by a similar product/service using a similar mark. If, while searching or applying for a trademark, it is determined that the mark resembles an already existing mark offering similar goods or services, the potential applicant needs to weigh its options moving forward. One of those options includes finding the owner of the existing mark and convincing her/him/it to enter into a coexistence agreement.

The Nuts and Bolts of Coexistence Agreements

Coexistence agreements are contracts entered into by two trademark owners who agree to coexist and use the subject mark based on the terms of the contract. A common use of coexistence agreements is to define the geographic boundaries that the respective trademark owners can operate in. When applying for a trademark that may conflict with an existing registered mark, the applicant may present a consent agreement to the United States Patent and Trademark Office (“USPTO”), which will summarize the terms of the coexistence agreement with the owner of the existing registered mark. Please note that although coexistence agreements weigh heavily in favor of the applicant, it is still possible that the USPTO may reject the application on likelihood of confusion grounds. The USPTO will review the entirety of the evidence before it and, if it determines that despite a coexistence agreement, the consumer will still be confused as to the source of the mark, the subject trademark application will be rejected.

The Agreement Between the Golden Knights and Army

Army’s opposition to the Golden Knights’ trademark application is somewhat puzzling. The owner of the Golden Knights, Bill Foley, is a graduate of West Point who pledged $15 million towards building the Foley Athletic Center at West Point. Nevertheless, Army opposed the Golden Knights trademark application because it felt that the mark would suggest a connection between Army and the Las Vegas hockey team. Although the Golden Knights disagreed, noting that no fan has ever showed up to one of their hockey games expecting to see the parachute team, the parties came to an amicable resolution by and through a negotiated coexistence agreement. Per the terms of the coexistence agreement, Army will continue to use the mark and name “Golden Knights” (and variations thereof) in connection with its parachute team, and the Las Vegas Golden Knights will continue to use the marks and names “Vegas Golden Knights” and “Golden Knights” in connection with its professional hockey team.

Trademark litigation can be a very long and expensive process. As such, coexistence agreements can be a rational solution to avoid (or end) protracted litigation. If the parties can come together to negotiate terms that are agreeable for both, they should save themselves a lot of time and money. Before negotiating a coexistence agreement, it is important to consult with an experienced trademark attorney who can present you with all of your options. If you are interested in learning more about this topic, or if you are involved in a trademark dispute, please e-mail us at info@kleinmoynihan.com, or call us at (212) 246-0900.

The material contained herein is provided for informational purposes only and is not legal advice, nor is it a substitute for obtaining legal advice from an attorney. Each situation is unique, and you should not act or rely on any information contained herein without seeking the advice of an experienced attorney.

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