Tag: denied

SALT LAKE CITY — The Utah Hockey Club is having issues getting 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 “Hockey Club” moniker — with everyone from management and players hinting at it as early as last summer.

But there could be a snag. Namely, YETI is already a pretty big brand.

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

“Trademark Act Section 2(d) bars registration of an applied-for mark that 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,” a non-final action issued on Jan. 9 said.

The Utah Yetis trademark application was for use in connection with “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.”

The problem: YETI already has numerous trademarks in standard and stylized fonts for just about all of those things.

As for adding Utah to the name, the USPTO said that wasn’t enough of a differentiating factor.

“In the present case, the wording ‘Utah’ in the applied-for mark is merely descriptive of or generic for applicant’s goods. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording ‘YETIS’ the more dominant element of the mark,” the non-final action said.

But what about making Yeti plural?

“An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar,” the action said.

Welp …

A future logo or style likely won’t help things either with the trademark office saying that “a mark presented in stylized characters” or with a “design element” generally will “not avoid likelihood of confusion.”

So, what now?

The team has three months from Jan. 9 to respond with further evidence and arguments to support its claim for the new trademark (it will also have to fix some bookkeeping things).

So there’s still hope for those who want to cheer on 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, at least, should be prepared to make its case.

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

“We’re in that process now of determining what is achievable in that realm,” he said.

But, in the end, what if the Yeti name isn’t achievable?

Here’s a look at the applications for the other announced finalists:

What are other Utah Hockey Club name finalists?

Utah Blizzard and Utah Venom: Both of these trademark applications were also refused due to a “likelihood of confusion” — with the trademark office pointing out many of the same issues the team has with trademarking the Yetis.

Utah Hockey Club: This one was refused on the Principal Register due to “the applied-for mark is primarily geographically descriptive of the origin of applicant’s goods and/or services.” In simpler terms, you can’t just trademark “Utah.”

But there looks to be a simple workaround here.

The team filed the name under a 1(b) application — or an intent-to-use application — back in the spring of 2024. If the team files an amendment to show it’s using the name (which … should be pretty easy) then it can amend the application to the Supplemental Register. That should clear things up.

Utah Mammoth: There were “no conflicting marks” found here, but some bookkeeping will need to be cleared up on the application (a proper address, making a disclaimer that the team has no claim to “Utah”, etc.).

The Mammoth non-final action was sent on Nov. 5, so the response deadline is in just a couple of weeks. If that deadline passes without a response, the application will be abandoned.

Utah Outlaws: The Utah Outlaws application also doesn’t have issues apart from some clerical things. The non-final action was sent on Jan. 9, though, so a little more waiting to see what happens with this one.