As part of Berenzweig Leonard’s Intellectual Property practice, we are introducing a new BL Business Branding series to highlight real world examples of how trademarks and intellectual property matters can impact businesses, and steps you can take to protect your assets and build your brand.
This week’s story comes from the new Utah Hockey Club, which has been holding a fan vote this season to choose a permanent team name to introduce for the 2025-2026 NHL season. Following several rounds of voting, six finalists for the team name were announced in June 2024: Utah Blizzard, Utah Hockey Club, Utah Mammoth, Utah Outlaws, Utah Venom, and the longtime frontrunner – Utah Yeti. From that list, the team filed several trademark applications for its potential new moniker to secure the finalist when voting concluded. However, the team hit a roadblock when the USPTO issued office actions for several of its applications, most notably for the fan-favorite Yeti. The USPTO cited a “likelihood of confusion” for consumers given the existence of already-registered “Yeti” trademarks, most notably for YETI COOLERS, LLC.
Although the crossover between a hockey team and drinkware company may seem miniscule in terms of confusion, the issue lies in securing the Yeti name for team merchandise, namely clothing and licensed products, for which YETI COOLERS, LLC already has several trademarks. After failing to reach a coexistence agreement with YETI COOLERS, LLC, the team has removed the Utah Yetis from contention and announced three finalists that fans will have the chance to vote on and select the new name: Utah Hockey Club, Utah Mammoth, and Utah Outlaws. The team still expects to release its new name and logo before the start of the next season.
What Can Be Learned from This?
Finding out that you are unable to use the brand name you have been workshopping is a disappointing experience that businesses face in trademark law. However, it has nothing in comparison to an infringement action. By being proactive, the Utah Hockey Club was able to receive feedback from the USPTO and proceed with peace of mind and security that their names would not get them into legal trouble. Had the name “Utah Yetis” won the contest and been announced to fans as the final winner before verifying the name’s eligibility, then wasted money, disappointment, bad press, and potential lawsuits would have surrounded what should have been a great announcement and marketing opportunity. By getting an early start, the team had time to pivot and focus on names that they will be able to secure after the final vote and around which they will be able to build a lasting brand.
Read more about the Utah Hockey Club Name Decision HERE
Looking to protect your company’s brand, or unsure of your next steps? Reach out to our BL Trademark Team by contacting Seth Berenzweig at sberenzweig@berenzweiglaw.com today.