The Utah Hockey Club is facing a trademark challenge after the U.S. Patent and Trademark Office (USPTO) rejected its application for the name "Utah Yetis." The rejection is based on the likelihood of confusion with existing brands, notably Yeti Coolers LLC. Despite this setback, the club remains committed to unveiling a permanent identity before the 2025-26 NHL season.
Likelihood of Confusion Analysis
The USPTO applies a "likelihood of confusion" test, primarily based on the DuPont Factors, to determine whether a new trademark is too similar to an existing one. In this case, the key issues are:
Similarity in Name: The term "Utah" is considered a geographic descriptor, leaving "Yeti" as the dominant element. This increases the risk of confusion with Yeti Coolers.
Similar Trade Channels: While both brands produce apparel, the USPTO's rejection highlights that trademarks must be distinct even if operating in slightly different markets.
Consumer Perception: If consumers could mistakenly associate Utah Hockey Club’s merchandise with Yeti Coolers, a rejection is likely.
Prior Registrations: The existence of multiple registered "Yeti" trademarks strengthens the case against the hockey club’s application.
However, legal experts have suggested that the team has a strong argument under the trade channel distinction. Since consumers buying a Utah Yetis jersey are unlikely to confuse it with Yeti Coolers’ merchandise, there is room to challenge the decision.
Potential Solutions
Response to USPTO with Arguments on Trade Channels
Utah Hockey Club can argue that their merchandise operates in a different market than Yeti Coolers.
They can present evidence that sports fans recognize "Utah Yetis" as an NHL brand rather than an extension of Yeti Coolers.
Negotiating a Co-Existence Agreement with Yeti Coolers
A co-existence agreement allows both parties to use the "Yeti" name in separate commercial spaces.
Precedents exist in sports, such as the Vegas Golden Knights' agreement with the U.S. Army and the Seattle Kraken likely making arrangements with Kraken Rum.
Exploring Alternative Naming Options
The team had multiple finalists in its fan vote, including Utah Mammoth, Utah Blizzard, and Utah Venom. Choosing an alternative name could sidestep legal hurdles entirely.
Rebranding with a Slight Modification
Adding a descriptor such as "Utah Ice Yetis" or "Utah Mountain Yetis" could create a distinction from Yeti Coolers.
This approach would require a fresh USPTO application but may lower the likelihood of rejection.
Conclusion
While the USPTO’s rejection presents a legal challenge, Utah Hockey Club still has viable options. By leveraging trade channel differences, negotiating a co-existence agreement, or adopting a modified name, the team can move forward with its branding efforts. The final decision will likely shape the identity of the franchise for years to come, and fans eagerly await the outcome of this trademark dispute.