As NHL fans may have heard, the Utah Hockey Club recently narrowed their list of possible team names down to three possibilities:
Utah Mammoth
Utah Hockey Club
Utah Wasatch *
* – one day later ‘Wasatch’ was swapped out for ‘Outlaws’ after a single day of fan voting revealed how unpopular it was
Keen NHL observers may ask what happened to “Utah Yetis”, the name that had been the favorite for months and which appeared to be the most popular amongst the fans and the organization? Well, to sum up all of the issues that led to this situation in a single word: trademarks.
When the Utah organization applied for trademarks for all of these prospective names, each trademark application received a refusal from the United States Patent and Trademark Office (“USPTO”), which was not entirely unexpected. As stated by Mike Maughan (an executive with the ownership group) “There is no name, other than a made-up name, that doesn’t have some kind of trademark conflict.”
The objection raised against the trademark application for ‘Utah Yetis’ was that this trademark “is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties”. The registered mark it was allegedly confusing with? “YETI”, the famed cooler and insulated cup brand owned by Yeti Holdings, Inc.
For those wondering how a company who is known for coolers and portable drinkware could possibly be confused with an NHL hockey team, the issue comes down to the “goods and services” that each of the trademarks are intended to be used in connection with.
For some quick background, when one applies for a trademark there is a requirement to list everything that will be sold in connection with the proposed trademark. This allows two different companies to co-exist using the same trademark, provided that they sell products in completely different, non-overlapping areas. This is how one company can have a trademark MERMAID for “Cosmetics, make-up and nail polish”, while another company can have a trademark MERMAID for “Swimming pools”.
How can there be any confusion between an NHL franchise and a company who makes coolers? Merch! If an NHL team is going to trademark a name, it stands to reason that they are also likely going to want to sell merchandise with that name plastered all over it.
In Utah’s application to the USPTO, Utah understandably included “clothing, namely, shirts, T-shirts, jerseys, sweatshirts, sweatpants, caps, hats, scarves, infant and toddler one-piece clothing, pajamas, bandanas, underwear, gloves, socks, shorts, suspenders, swim trunks, coats, jackets, robes, pants, leggings, sweaters, ear muffs, cloth bibs, belts, warm-up suits, headbands and wristbands” as goods that would be sold in connection with the trademark.
The problem is that Yeti Holdings already sells apparel, and has a registered trademark that covers “Clothing, namely, t-shirts, jerseys, shorts, hats, caps, sweatshirts, socks, jackets”. This prevents the hockey club from using the word ‘Yeti(s)’ in connection with any of the merchandise listed in Yeti Holdings’ registered trademark.
For those claiming that in Utah’s trademark application the term “Yetis” is plural and includes the word “Utah”, unfortunately those are not enough of a difference – at least in the eyes of the USPTO. Specifically, the USPTO stated that whether it is singular or plural, it is essentially identical in sound, appearance and meaning, and the inclusion of the word “Utah” describes the geographic location of the origin of the goods. Further, the word ‘Yetis’ was deemed the dominant part of the trademark.
To help illustrate these points, it may be helpful to think of the following different companies or organizations that co-exist alongside one another: New York Yankees, New York Fries, New York Times. Each of these names include “New York”, but it’s the additional terms ‘Yankees’, ‘Fries’, and ‘Times’ that distinguish these entities from one another – at least in the view of trademark law.
This isn’t the first time that intellectual property rights such as trademarks and copyrights have presented an issue with professional sports teams. Back when the Jacksonville Jaguars were founded as a new NFL franchise in 1993, this was their proposed logo:
Look familiar? How about now:
Ford Motor Company (who owned Jaguar Cars at the time) accused the Jacksonville club of copyright infringement. The case did not go to court, as the team’s lawyers and the automaker reached an agreement that involved the team changing the design of their logo.
Why couldn’t the Utah hockey club and the YETI cooler company come to a similar agreement? Well, Utah apparently reached out to YETI and they tried – even bringing the NHL in to assist with negotiations – but they clearly did not come to a resolution that worked for both parties.
So it’s back to the drawing board for the Utah Hockey club, with a new list of potential names that hopefully do not share the same potential legal entanglements that the “YETIS” presented – but rest assured “Wasatch” won’t be one of them!
Article authored by Kevin Jarzyna, Moffat & Co.