Utah Hockey Club Trademark Update

Let’s play another round of “I am not a trademark attorney but…” shall we?

The clickbait title for this post could have been “Utah Hockey Trademarks Rejected!” It’s true but it’s hardly that simple.

It’s been about since nine months Uyte, LLC – who were anonymous at the time but since have been confirmed to be related to Utah Hockey Club owners Ryan and Ashley Smith – applied for their first batch of Utah hockey trademarks. Just a few years ago, nine months would have been enough time for a trademark application to be processed, published for opposition, and granted. The US Patent & Trademark Office moves slower these days, though.

That doesn’t mean nothing has happened. In fact, there has been a formal response by the USPTO to every name that Uyte submitted except for one. And every single response has been to reject the trademark application.

While that sounds dire, it’s not. Trademark applicants have three months to respond to that rejection and, in the vast majority of the Uyte trademark applications, the rejection was for something relatively trivial that can be corrected.

The applications for Utah HC, Utah Fury, Utah Blast, Utah Swarm, Utah Caribou, Utah Glaciers, Utah Squall, Utah Frost, Utah Canyons, Utah Freeze, and Utah Hive were all rejected for reasons that can all be summed up as “paperwork.” For example, the address listed on the applications included an “in care of” line, which the USPTO doesn’t allow. Additionally, when a sports team name is trademarked, they must include a disclaimer that the geographic descriptor is not claimed – the Utah Frost must explicitly say that no claim is made to “Utah” – and none of these applications did that. Some of the applications also need additional clarification as to what the trademark will be used for.

That leaves five other rejected names, all of which had the same “paperwork” rejection in addition to reasoning that might be more difficult to deal with.

The Utah Hockey Club trademark was rejected as being “Primarily Geographically Descriptive.” Basically, you can’t trademark a place name and “Hockey Club” is too generic to trademark. Putting two things that can’t be trademarked together doesn’t necessarily get you a name that can be trademarked. It’s worth noting that two of the team’s current alternate logos – but not their primary logo – got tagged with this same rejection.

Utah Mountaineers has run up against a pre-filed application. Namely, after Uyte filed their initial batch of trademarks but before they added Mountaineers to their list, someone swooped in and applied for a trademark on Utah Mountaineers. That application was published for opposition last month and Uyte has to wait to see what happens with it before their own application for that mark can be dealt with.

Finally, the supposed front-runner has gotten caught up in “Likelihood of Confusion.” Along with Utah Venom and Utah Black Diamonds, Utah Yetis was rejected due to the possibility of confusion with existing trademarks.

The only name that hasn’t been rejected yet is Utah Blizzard and it looks like that’s actually in the process of being vetted right now. It has the same “paperwork” issues as all of the rest so I expect to see a rejection soon.

Again, trademark applicants have three months to rejections like these, so (almost) nothing is final here.  Even the “Likelihood of Confusion” issues can be negotiated. We saw the Coachella Valley Firebirds (back when they were still using the Palm Springs location name) dodge confusion with the Flint Firebirds by getting the Flint Firebirds to sign off on the Palm Springs Firebirds mark.

What this means is that the response from Uyte – or lack thereof – will be telling. The first batch of rejections came on November 5, which means the deadline to respond is near. Some of the others weren’t rejected by the USPTO until yesterday; the countdown clock is just starting on those.

I did say almost nothing is final. There was a near-immediate response to the rejection of one of the names: Utah Frost. Eight days after the USPTO rejected the application, it was formally abandoned. That’s the only application to have been abandoned thus far and, as such, it can safely be removed from the list of potential names.

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Update, 2:58 PM: I wasn’t going to include this because I don’t entirely understand it but I guess it fits the theme of “I am not a trademark attorney but…”

There was a pre-existing application for Utah Yetis filed in fall of 2023 by Wasatch Sports Factory. It was published for opposition in April 2024 and some noise was made over the summer of Uyte acquiring that mark. The thing is, that mark was never registered. In May, the then-pending application was updated such that the attorney of record was Uyte’s attorney and then in October the application was abandoned entirely.

If Uyte had acquired that application after it had made it all the way to being published for opposition, why did they abandon it?