New Utah NHL Team Takes Shot-Pass With Nine Intent-to-Use Trademark Applications | Butler Snow LLP
Though the NHL Stanley Cup Playoffs are in full swing, a lot of off-ice activity is happening as a result of the sale of the Arizona Coyotes to Utah Jazz owners Ryan and Ashley Smith’s Smith Entertainment Group. Most hockey fans are now aware that the Coyotes will be relocating to Salt Lake City. While the roster will be not affected by the relocation, Coyotes franchise owner Alex Meruelo did not sell the Coyotes’ intellectual property, including its name and marks, according to Sportico. And so the team will have a new name, an opportunity that Ryan Smith wants to share with the fan base via, conveniently, a bracket-style online survey run by his former company Qualtrics.
The Utah franchise will remain in the Western Conference’s Central Division and will continue to be a perennial foe of my beloved Nashville Predators. But my immediate interest with the Utah relocation is the club’s trademarks.
A company called Uyte, LLC recently filed for nine trademark applications with the US Patent & Trademark Office (USPTO). Uyte, LLC was formed in early April, and the trademark applications were filed between April 16 and April 23. In order of application filing, the marks are:
Utah Hockey Club
Utah HC
Utah Fury
Utah Venom
Utah Blizzard
Utah Yetis
Utah Outlaws
Utah Ice
Utah Mammoth
Each of the marks is for trademark-bearing clothing and related goods and for entertainment, specifically ice hockey exhibitions.
No logos?
All of the applications are for “standard character marks,” meaning the mark owner can use any design containing those words and, more importantly, that others cannot use their own designs with those words. This gives the franchise the ability to do whatever it wants in terms of designs containing those words.
Here’s the problem. The foundation of trademarks rights is “use in commerce.” You can’t just trademark every logo you dream up. If you are the first to use the mark in commerce, you have trademark rights against others’ use of that mark or marks that are confusingly similar. The federal registration system gives notice to everyone that you’re the owner and you are using the mark in commerce.
So how is the Utah NHL franchise seeking nine different trademark registrations, when it hasn’t decided the team name? That’s because the Lanham Act contains a provision allowing a person who has a “bona fide intent to use a trademark in commerce” to receive registration.
This begs the question … does the franchise have a “bona fide intent to use” all nine marks? Isn’t it the case that the team has a bona fide intent to conduct an online survey of fans to decide which of the nine marks it’s going to use as its NHL team name? There is little case law on the subject, but courts have firmly said that an intent to reserve rights in the mark is not sufficient. The Trademark Trial and Appeal Board (TTAB) has even given an example of a situation casting doubt on the bona fide nature of the intent where the applicant has filed “numerous intent-to-use applications for a variety of desirable trademarks intended to be used on [a] single new product . . . .”
In short, you can’t make dinner reservations for 7 p.m. this Friday night at nine different restaurants when you know you’re only going to eat at one of them.
What’s Next?
Under USPTO rules, the team can wait until the office issues a Notice of Allowance, paving the way for a federal registration, after which the club will have six months to prove its use in commerce. With the NHL Draft taking place in late June and training camps opening in September, one would expect the team to have a name within that six-month window.
Personally, if I were advising the franchise owners, I’m telling them that with nine intent-to-use trademark applications for one hockey team, they need to move their feet on choosing a team name if they want to avoid a trademark opposition proceeding.
