Harris Sliwoski Article: Utah Yetis: U.S. Trademark Lessons for All

United States Trademark Lessons

Utah Yetis. I’ll leave it up to readers to decide if they think it’s a cool name or not for a sports team. But what is undeniable is that the troubles the NHL’s Utah Hockey Club is encountering over its attempt to use and register that name as a trademark offers valuable lessons to businesses of all sizes.

The Yeti Trademark Dispute: A Quick Overview

The Utah Hockey Club, part of the National Hockey League, has encountered significant challenges after choosing to brand their team as the Yetis.

Unfortunately for the club, the U.S. Patent and Trademark Office (USPTO) determined that Utah Yetis is too similar to trademarks held by Yeti Coolers, a well-established outdoor products company. Yeti Coolers’ prominence in branded apparel created a key issue, as sports teams often rely heavily on merchandise like clothing and accessories to promote their brand. The USPTO likely concluded that consumers could mistakenly associate Utah Yetis merchandise with Yeti Coolers, particularly given the overlapping categories.

Why Was the Application Refused?

The USPTO evaluates trademark conflicts by examining both the similarity of the marks themselves and the relatedness of the goods or services they cover. If Yeti Coolers had only registered trademarks for coolers, the USPTO might have reached a different conclusion regarding the Utah Yetis application. However, Yeti Coolers’ trademark portfolio extends to several categories, including clothing, which overlaps with merchandise commonly sold by sports teams.

A similar situation occurred with one of my past clients in the apparel industry. An alcoholic beverage company filed a trademark for my client’s brand name to cover certain clothing items as part of a promotional campaign. Although the two companies had coexisted without issue in unrelated industries, the attempt to secure rights for clothing triggered a conflict. The matter was resolved quickly, but it serves as a reminder that trademark protections can extend well beyond a company’s core products or services.

Key Lessons for Businesses

This case offers important takeaways for businesses, sports organizations, and other entities when selecting and safeguarding their brands:

1. Conduct Comprehensive Trademark Searches

Before adopting a name, logo, or tagline, conduct an in-depth trademark search. A simple online search isn’t sufficient. Collaborate with a trademark attorney or utilize professional search tools to identify existing registrations or applications that could create conflicts.

To be clear, the Utah Hockey Club has filed applications for several other possible names, and it is likely that searches were in fact run. However, the club may have wanted to keep the Utah Yetis name in the mix, perhaps with a view to reaching an understanding with Yeti Coolers.

2. Understand the Scope of Trademark Protection

Trademarks don’t just apply to identical names or designs; they also cover anything likely to cause consumer confusion. This includes similar marks, related industries, and overlapping goods or services. Even if your business operates in a completely different market, a well-known brand may still oppose your use (or, as has happened with the Utah Yetis trademark application, USPTO may reject it)Trademarks don’t just apply to identical names or designs; they also cover anything likely to cause consumer confusion.

Is your business prepared to navigate a similar dispute? Have you considered how far your company’s trademark protection extends across industries and product categories?

3. Anticipate Future Expansion

While the Utah Hockey Club’s current operations may not directly overlap with Yeti Coolers’ products, the potential for overlap in merchandise—such as branded apparel or accessories—made the Utah Yetis brand problematic. Choose a name that supports your long-term growth without running into legal barriers.

4. Prepare for Trademark Disputes

Consult an attorney early on to identify and prepare for possible disputes with other trademark owners or USPTO refusals. A trademark professional can assess your position, explore potential defenses, and negotiate solutions. In some cases, a co-existence agreement can allow both parties to use similar marks under specific terms.

5. Budget for Legal and Branding Protection

Trademark disputes can be expensive and time-consuming. Addressing potential conflicts early on is often far less costly than dealing with rebranding or litigation later. Include trademark searches and legal reviews in your branding budget to avoid unexpected expenses.

Conclusion

The Utah Hockey Club’s challenges with the Utah Yetis trademark emphasize the importance of taking a proactive approach to trademark strategy.

Selecting a brand name isn’t just about creativity—it’s also a legal decision that requires careful planning. Conducting thorough trademark searches, exploring co-existence agreements when conflicts arise, and consulting with a professional early on are critical steps to avoid disputes. By addressing these potential challenges proactively, businesses can minimize risks and focus on building strong, enduring brands. Is your brand strategy strong enough to withstand scrutiny?

Whether you’re managing a sports team or launching a new product, the takeaway is clear: trademarks matter and investing in due diligence from the start is essential.

Fred Rocafort

Fred leads Harris Sliwoski’s intellectual property practice and is the coordinator of the firm’s international team. Much of Fred’s practice consists of helping cannabis businesses protect their brands. He also works with entrepreneurs and companies entering the Web3 space, a new frontier for IP law. Prior to joining Harris Sliwoski, Fred worked overseas for more than a decade, in both government and private sector roles. Fred is a regular contributor to the award-winning China Law Blog and Canna Law Blog. Fred began his career overseas as a U.S. consular officer in Guangzhou, China, where he advocated for fairer treatment of American companies and citizens in China and for stronger intellectual property rights enforcement. After entering the private sector, Fred worked at a Shanghai law firm as a foreign legal advisor and later joined one of the oldest American law firms in China, helping foreign companies navigate the Chinese legal environment. He also led the legal team at a Hong Kong-based brand protection consultancy, spending most of his time out in the field, protecting clients against counterfeiters and fraudsters in Greater China, Southeast Asia and Latin America. In addition to his IP work, as a native Spanish speaker, Fred works closely with different Harris Sliwoski teams on Latin America and Spain matters. Fred also provides advice to cannabis industry participants and other businesses on import and export transactions. Fred is an ardent supporter of FC Barcelona—and would be even in the absence of Catalan forebears who immigrated to Puerto Rico in the mid-1800s.

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Utah Yetis: U.S. Trademark Lessons for All