Utah Hockey Club’s path to securing its official team name has gotten a bit harder.
The United States Patent and Trademark Office rejected six of the names the team filed under intent-to-use applications back in April. Notably, that list includes the Utah Yeti and Yetis which is known as a fan — and organization — favorite.
Where does Utah go from here? How does the timeline for a name announcement change? Can the team still be the Yetis?
In short, this is not the end of the road for the Yeti trademark or any of the names that were rejected. Utah has three months from the date of refusal to appeal the notion.
Per the USPTO records, Utah Yetis was rejected on Jan. 9 for “likelihood of confusion” with other registered marks, namely the Yeti cooler company. The non-final action states having the word “Utah” in front of Yetis in the applied-for mark “is merely descriptive of or generic for applicant’s goods” and the wording is not significant in terms of “affecting the mark’s commercial impression” because Yetis is the “more dominant element” on the mark.
(Francisco Kjolseth | The Salt Lake Tribune) The fans cheer on Utah Hockey Club and the New York Rangers before the start of their game at the Delta Center in Salt Lake City on Thursday, Jan. 16, 2025.
Mammoth, Blizzard, Outlaws, Venom and HC were also rejected. Mammoth was refused in November; the other refusals all came in January.
The rejection of the Mammoth mark was because the USPTO needed the team to clarify the wording “ice hockey exhibitions,” according to the non-final action. It requested it substitute its intended use of the mark with “clothing, namely shirts, t-shirts, jerseys, sweatshirts,” and a longer list of other merchandise items. Outlaws had a similar clerical error that needed clarification, but that is not hard to get around.
If Utah still wants to pursue the Yeti name, there are a few things it can do moving forward. Jonas Anderson — a professor of patent law, intellectual property, trade secrets, civil procedure and property at the University of Utah — helped outline what this may look like.
The two routes to a solution, he said, are appealing or striking a deal with the Yeti cooler company.
“[Utah] can respond as soon as they want to, as soon as they can get documents. But you don’t know how long the USPTO is going to take,” Anderson said. “But it’s not going to take a year. It will probably take six months, nine months. So they could, theoretically, appeal it and win in time for next season.”
(Francisco Kjolseth | The Salt Lake Tribune) People purchase merchandise as the Utah Hockey Club hosts their first NHL draft party at the Delta Center on Friday, June 28, 2024.
A robust appeal could include survey data about whether people would be confused between the two brands if both were trademarked, as well as interviews with potential consumers on why they would be able to differentiate the products in the market. There is a chance Utah has been preparing for this type of reaction from the USPTO and has these types of documents ready to go.
“Typically, lawyers aren’t completely floored by these rejections. Especially when there’s other companies in the space that you’re trying to get into,” Anderson said. “They’d have a pretty good case that no one would be confused by Yeti coolers T-shirts and Utah Yetis hockey team T-shirts. You can tell the difference between the two. I think there’s a pretty good chance they’d win that appeal.”
Alternatively, Utah could avoid a confrontation with the USPTO and instead work to an agreement with Yeti coolers.
If the two companies agree they can co-exist with the same mark in both different and overlapping markets — or even collaborate — Utah could move forward with the name. The two parties would file a document with the USPTO that says there is no objection and that they can own separate trademarks on the Yeti name.
“It might involve just agreeing that Yeti coolers does not care if the Utah Yetis exist. Or they could enter it like a collaborative agreement where Yeti coolers is the official cooler company of the Utah Yetis. Kind of co-branding going on,” Anderson said. “I think one way or another, there will be some talks between Ryan Smith, Smith Entertainment Group and Yeti coolers. And they’ll probably get something worked out.”
Yeti coolers could, of course, say no, too.
“It’s really going to come down to if Yeti coolers cares to try to block them,” Anderson said. “If Utah Hockey Club appealed and Yeti coolers didn’t want them to, they could file something with the USPTO that said ‘don’t issue this, it would cause confusion.’”
In terms of an effect on the name-announcement timeline, Utah Hockey Club president Chris Armstrong said the team is still committed to having its official brand revealed by the start of next season.
“We will continue to involve the community in the final stages of the naming and branding process and are fully on track with our plans to announce a permanent name and identity ahead of the 2025-26 NHL season,” Armstrong said.
(Rick Egan | The Salt Lake Tribune) Utah Hockey Club center Clayton Keller (9) jumps on Utah Hockey Club defenseman Mikhail Sergachev (98) to celebrate Sergachev's game-winning goal in overtime, giving Utah a 3-2 win over the Vancouver Canucks at the Delta Center, on Wednesday, Dec 18, 2024.
“It has always been our intention to let our season one identity as Utah Hockey Club, the team’s performance, and the amazing response from our fans hold the conversation through our inaugural season.”
If Utah decided to simply drop the rejected marks — which it is very unlikely to do — the team has the options of Ice, Swarm, Fury, Squall, Caribou, Blast and Canyons which did not face any problems from the USPTO.
