Utah Hockey Club’s request to trademark “Utah Yetis” denied

SALT LAKE CITY — The Utah Hockey Club is having trouble with the trademark for its preferred permanent name.

It’s no secret that “Yetis” or “Yeti” has long been the favorite to replace the team’s temporary nickname “Hockey Club” – with everyone pointing it out to management and players as far back as last summer.

But there might be a catch. Namely, Yeti is already a pretty big brand.

Earlier this month, the trademark for “Utah Yetis” was rejected by the U.S. Patent and Trademark Office due to a “likelihood of confusion.”

“The Trademark Law Section 2(d) prohibits the registration of a trademark that is so similar to a registered trademark that it is likely that consumers would be confused, misled or deceived the parties,” said a non-final issued on January 9th. Action.

The trademark performance in Utah Yetis was for use with “apparel, namely, shirts, t-shirts, jerseys, sweatshirts, sweatpants, caps, hats, scarves, infant and toddler clothing, pajamas, bandanas, underwear, gloves, mittens, gloves, mittens, Hand shears, hand shears, hand shears, one socks, shorts, suspenders, swimming trunks, coats, jackets, robes, pants, leggings, sweaters, earbuds, Cloth bibs, belts, warm-up suits, headbands and wristbands.

The problem: Yeti already has numerous trademarks in standard and stylized fonts for almost all of these things.

As for what Utah added to the name, the USPTO said it wasn’t enough of a differentiating factor.

“In the present case, the wording ‘Utah’ in the applied mark is merely descriptive or general of the applicant’s goods. Therefore, this wording is less significant in influencing the commercial impression of the brand and making the wording “Yetis” the more dominant element of the brand,” the non-final action states.

But what about Yeti plural?

“A mark applied to the unique or plural form of a registered mark is substantially identical in sound, appearance, meaning and commercial impression, and therefore the marks are confusingly similar,” the action says.

Welp…

A future logo or style is unlikely to help either with the trademark office saying that “a mark presented in stylized characters” or with a “design element” in general “does not avoid the likelihood of confusion.”

So what now?

The team has three months from January 9th to respond with further evidence and arguments to support their claim to the new trademark (they also need to fix some accounting stuff).

So there is still hope for those who want to cheer for the Yeti or Yetis. Hey, the Detroit Red Wings and Red Wing Shoe Company have similar names (and even pretty similar logos), after all.

And the team should at least be ready to make its case.

In September, Chris Armstrong, president of the Utah Hockey Club, said that while the team knew the fans’ names, it was a “complicated process” from a legal, branding and intellectual property perspective.

“We are now in this process of determining what is achievable in this area,” he said.

But what if the Yeti name isn’t reachable?

Here you can see the applications for the other announced finalists:

What are other Utah Hockey Club finalists?

Utah Blizzard and Utah Venom: Both trademark applications were also rejected due to a “likelihood of confusion” – with the trademark office citing many of the same issues as the Yetis trademark team.

Utah Hockey Club: This was refused in the main register because “the trademark applied primarily geographically describes the origin of the applicant’s goods and/or services”. On a simpler note, you can’t just trademark “Utah.”

But there seems to be a simple workaround here.

The team submitted the name in Spring 2024 under a 1(b) Application or a Use Application. It may change the application to the supplementary register. That should clear things up.

Utah Mammoth: “No conflicting marks” were found here, but some accounting needs to be released in the application (a proper address, making a disclaimer that the team is not entitled to “Utah”, etc.).

The mammoth non-final promotion was sent on November 5th, so the response deadline is just a few weeks away. If this period passes without a response, the application will be abandoned.

Utah banned: The Utah Outlaws application also has no problems, apart from some clerical things. However, the non-finale action aired on January 9th, so there was a bit more waiting to see what happened with that one.