Utah Yetis: The road to naming a new NHL team hits trademark snag

McAfee & Taft
Contact

McAfee & Taft

In 2024, Utah made its big debut in the National Hockey League, adding a new team to the league and a new reason for fans to get excited. The challenge for the team owner, Uyte, LLC, wasn’t just about building a roster of players or designing a cool logo—it was about picking a name for the team. After narrowing down a list of options from a fan vote, the team chose “Utah Yetis,” also known as everyone’s favorite abominable snowman, as its new, official name. But as it turns out, the road to registering that name wasn’t as smooth as expected, thanks to a bit of trademark trouble.

The trademark challenge

Utah Yetis. It sounds pretty unique for a hockey team, right? The problem arose when the team tried to register its name with the U.S. Patent and Trademark Office. The USPTO rejected the application, citing that the name “Yeti” was already associated with numerous other trademarks, particularly, those owned by Yeti Coolers, LLC.

At first glance, it might seem strange that a cooler company could stop a hockey team from using a name. But here’s the thing: it’s not just about the word YETIS, it’s about what goods and services are offered under that name. Trademarks are words or symbols that act to identify the source of specific goods and services, and it’s possible for more than one party to own the same trademark as long as it’s being used on goods or services that wouldn’t cause consumer confusion.

Still, when you think of a professional sports team, the first thing that comes to mind is usually the team and its games.  What does that have to do with coolers? The short answer is nothing. In the modern sports world, merchandise is a big revenue driver. Jerseys, hats, T-shirts, and other fan gear are a huge business, and it’s common for an NHL team like Utah Yetis to sell apparel and other products. When Utah applied to register the name “Utah Yetis,” they didn’t just apply for a trademark for their hockey team. They also intended to use the name for things like clothing.  Yeti Coolers, also trying to capitalize on the additional revenue from selling branded apparel, had already registered a “Yeti” trademark for clothing and other merchandise. So, the USPTO rejected the “Utah Yetis” application.

The bigger picture: Looking beyond your main product

Whether you own a sports team or not, this case highlights an important lesson for any business or organization thinking about trademarks. When you come up with a name or logo for your brand, it’s a good idea to think about the future (within reason). You may want to think about goods or services you’ll be selling that are related to your primary product and might be tied to the brand. Depending on the market for your primary product, that might include clothing, accessories, and anything else that could feature your logo. Here, the challenges of using Yetis for a hockey team name are the preexisting registered trademarks that might be an obstacle to using the same name on revenue driving merchandise. Only time will tell if Uyte decides to let go of Yeti or respond to the USPTO. The team is currently operating under the name “Utah Hockey Club” while they go back to a fan vote for a new name.

While it can be tempting to apply for every good and service you may use down the road, this can be a bit of a balancing act. The longer the list of goods and services that you might want to offer under that name, the more likely it is that someone else is already using that name.  What’s more, you have a limited window of time to prove you’re using your trademark in connection with all the goods and services listed in your application – a requirement for registration. So, focus on what you are offering now, while keeping an eye on where your business is likely to expand in the immediate future. This way, you can craft a trademark strategy that gives you the path to grow your brand. In other words, don’t focus on playoffs when you’re playing the first game of the season.

Takeaway for businesses

If you’re launching a new business or brand, take a page from this playbook. When choosing a name or logo, always check the trademarks that could apply to your other related products, including those you are selling in the immediate future. Thinking ahead can save you from legal trouble down the road and help ensure that your brand stands strong without running into trademark conflicts.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations. Attorney Advertising.

© McAfee & Taft

Written by:

McAfee & Taft
Contact
more
less

PUBLISH YOUR CONTENT ON JD SUPRA NOW

  • Increased visibility
  • Actionable analytics
  • Ongoing guidance

McAfee & Taft on:

Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide
- hide