The National Hockey League’s newest team is competing under the name Utah Hockey Club during its inaugural season while the organization and its fans decide the team’s official nickname. Despite fan support for the name, the club recently made a formal announcement that they would not pursue the “Yetis” as their team’s name. The announcement came shortly after a decision from the United States Patent and Trademark Office rejecting the team’s trademark application for UTAH YETIS, citing a likelihood of confusion with several registered trademarks owned by Yeti Coolers LLC, owners of the YETI brand of coolers. The decision may have deeper trademark implications than many fans realize, and although the move may seem like a simple branding choice, it touches on several important legal and business considerations when it comes to adopting a trademark.
First, securing a trademark for a new team name is crucial to protect the brand's identity. Before adopting a name, organizations typically conduct thorough trademark searches to ensure its name isn’t already in use or too similar to an existing trademark for competing or related goods and/or services. In the case of the Yetis, it appears there were some existing trademark owners whose prior rights may have factored heavily in the team’s decision to pursue other names.
Although the term “Yeti” itself evokes a mythical abominable snowman-type creature, various companies in different sectors (from outdoor gear to entertainment) have already used the term in connection with a wide array of products and services. For example, YETI-brand coolers and outdoor gear has been offered for years by Yeti Coolers, LLC, who owns several U.S. trademark registrations for the mark YETI in connection with a wide array of goods and services. That brand has achieved wide popularity in the U.S., to the point that the hockey club likely realized that pursuing the Yetis name could lead to opposition from Yeti Coolers, especially with a brand that has a strong presence in the marketplace. Although Utah will provide professional hockey exhibition entertainment services, the brand must also consider all the ancillary goods and services that will be offered or licensed under the new name. In the realm of professional sports, that encompasses a wide scope, which could overlap with the goods and services of other trademark holders, especially when dealing with popular brands such as Yeti Coolers.
By pivoting away from the Yetis name, Utah avoids potential objection or saddling itself with unnecessary licensing arrangements from existing trademark holders, such as Yeti Coolers. With several other viable trademark options in play, the team can focus on finding a name that not only resonates with its fan base, but also avoids potential legal hurdles and the underlying uncertainty and cost involved. The move seems shrewd - as with all new brands, it is smart to consider many possible candidates and whittle down the choices based on availability and, of course, the guidance of your trusted IP counsel.