When you’re building a hockey team—or any brand—you want a name that scores big. For the “UTAH YETIS,” it seemed like they had a slapshot success: a strong name with local pride and character. But before the puck even dropped, the USPTO blew the whistle with an Office Action.
What’s an Office Action? Think of it like a referee calling offsides—it’s the USPTO’s way of saying, “Wait a minute, there are some things to sort out before you can move forward.” So, what’s the holdup? Let’s break it down and take a closer look at the plays the “UTAH YETIS” will need to make to keep their name and trademark dreams in action.
The Big Call: Likelihood of Confusion
The USPTO’s main issue is a §2(d) refusal, meaning they believe the “UTAH YETIS” name could confuse fans (or shoppers, in this case) because it’s too close to other registered trademarks for “YETI.”
Here’s how the USPTO broke it down:
- Zone Defense
The USPTO sees “UTAH” as descriptive (just telling people where the goods come from), so “YETIS” is the real star of the name. And since “YETIS” is just the plural of “YETI,” they’re calling this a near-identical match. - Too Many Men on the Ice
Both the “UTAH YETIS” and the existing “YETI” trademarks cover apparel like jerseys, hats, and sweatshirts. This overlap is like two players fighting for the same puck—things can get messy. - Shared Ice
If these products end up in the same stores (or online shops), the USPTO thinks fans might assume they’re from the same source, causing confusion in the marketplace.
Preventing confusion is one of the USPTO’s key goals—no one wants to grab a hockey jersey thinking it’s team merch, only to realize it’s cooler swag.
Other Penalties on the Play
The USPTO didn’t stop with the likelihood of confusion. They also flagged some smaller infractions:
- Geographic Descriptiveness: The USPTO says “UTAH” just tells people where the goods are from and isn’t unique enough to trademark on its own. They’re asking for a disclaimer saying the applicant doesn’t claim exclusive rights to the word “UTAH.”
- Vague Description: The application includes “entertainment services,” but that’s like saying “scoring goals” without explaining the play. The USPTO wants more details, like whether this means hosting hockey exhibitions, competitions, or something else entirely.
How to Get Back in the Game
This Office Action isn’t the end of the season for the “UTAH YETIS” trademark—it’s more like a timeout to strategize. Here are some general moves applicants might consider when facing similar situations (no legal advice here, just some ideas from the press box):
- Emphasize Uniqueness
Highlighting the “UTAH YETIS” branding as unique and tied to Utah hockey culture could help distinguish it from “YETI.” Adding evidence that the team name has local significance might score points with the USPTO.
- Fine-Tune the Scope
Narrowing the application’s focus to hockey-related goods or events could reduce the overlap with “YETI” trademarks, potentially avoiding confusion.
- Prove Coexistence
Showing that other similar marks coexist without consumer confusion might help the case. For example, many brands use “wildlife” names, and coexistence evidence could support registration. Hey, maybe a really good branding partnership in the making!
Why This Matters
For a hockey team, the name isn’t just a label—it’s part of the game-day experience. A name like “UTAH YETIS” connects fans to their team, their community, and their shared pride. But trademarks are a balance between creativity and compliance, and the USPTO’s role is to make sure one brand doesn’t skate into another’s zone.
This case shows how even the best branding ideas can face challenges on the legal ice. From potential confusion to procedural nitpicks, there’s always more to consider than just slapping a logo on a jersey.
Final Buzzer
The “UTAH YETIS” trademark is a great example of how trademark law intersects with sports, branding, and community identity. Whether this team name gets the green light or not, the journey underscores the importance of thinking through every move when branding your company. As the puck drops on the next phase of this application, fans and brand-watchers alike will be watching to see if the “UTAH YETIS” can skate past these challenges and claim their spot on the trademark scoreboard.
Just My Thoughts from the Press Box to Keep You Out of the Penalty Box.
This blog post is for informational purposes only and does not constitute legal advice. Reading this post does not create an attorney-client relationship. Trademark issues, including responding to Office Actions, are highly fact-specific, and outcomes can vary based on individual circumstances. For advice on your particular situation, consult a qualified trademark attorney.