One Of These Things Is Not Like the Other

(A Lesson In Trademark Law)

The Utah Hockey Club has a naming problem.

Rushed into the National Hockey League as an Arizona Coyotes replacement this season, the club decided to use “The Utah Hockey Club” moniker until trademark issues could be resolved on their alternative name choices.

Their original alternative name choices were Yeti (the ownership and fan favorite), Mammoth, Blizzard, Outlaws, Venom and Utah Hockey Club. However, the US Patent and Trademark Office rejected all their submissions. Mammoth and Outlaws were rejected more for clerical issues that are resolvable, despite the fact that both Mammoth and Outlaws are professional lacrosse team names. Yeti was rejected for the likelihood of confusion with YETI® Coolers. In particular, it seems that YETI Coolers, LLC has filed for broad trademark use across many categories, including clothing and apparel which may conflict with potential Utah Yeti hockey apparel.

BTW I’m not a trademark attorney, but my point of view on the Yeti conflict is validated by a real trademark attorney (https://harris-sliwoski.com/blog/utah-yetis-u-s-trademark-lessons-for-all/ for example).

The Utah Hockey Club pivoted to these three alternatives: Utah Hockey Club, Utah Mammoth, and Utah Wasatch (Wasatch is a nearby mountain range). Fans were supposed to vote at the upcoming 4 home games, and the winner would be decided based on the fan vote.

After the first game’s voting, the club removed Utah Wasatch and replaced it with Utah Outlaws (a good decision as nobody outside of a few people in Utah knows what a Wasatch is). The “final three names” are: Utah Hockey Club, Utah Mammoth, and Utah Outlaws. But I bet they would still love to find a way to use Yeti.

So, let’s play the “One of these things is not like the other” game. In considering Yeti, Mammoth and Outlaws, which name would be most confusing to the public.

UTAH YETI HOCKEY vs YETI COOLERS

UTAH MAMMOTH HOCKEY vs. COLORADO MAMMOTH LACROSSE

UTAH OUTLAWS HOCKEY vs. DENVER OUTLAWS LACROSSE

I would argue that Yeti is the least confusing and I’m certain that consumer confusion testing would provide this result. It seems unlikely that YETI Coolers, LLC would field a hockey team, whereas a hockey team called Utah Mammoth could easily be confused with the Colorado Mammoth lacrosse team.

Is this a case of superior intellectual property management by YETI Coolers, or poor intellectual property management by the Denver Outlaws and Colorado Mammoth lacrosse teams?

BTW, shame on the marketing team at YETI Coolers. They failed to convince their management that a joint trademark agreement would generate 20x the benefits for the YETI Coolers brand. Imagine the marketing possibilities!