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United States – Franchising – New Utah NHL team takes shot-pass with nine intent-to-use trademark applications

Although the NHL Stanley Cup Playoffs are in full swing, there is a lot of off-ice activity taking place following the sale of the Arizona Coyotes to Utah Jazz owners Ryan and Ashley Smith’s Smith Entertainment Group. Most hockey fans now know that the Coyotes are moving to Salt Lake City. While the roster will not be affected by the move, Coyotes franchise owner Alex Meruelo has not sold the Coyotes’ intellectual property, including the name and brands, according to Sportico. And so the team is getting a new name, an opportunity that Ryan Smith wants to share with the fanbase via, conveniently, a bracket-style online survey conducted by his former company Qualtrics.

The Utah franchise remains in the Central Division of the Western Conference and will remain a perennial enemy of my beloved Nashville Predators. But my immediate interest in the move to Utah is the club’s trademarks.

A company called Uyte, LLC recently filed nine trademark applications with the United States Patent & Trademark Office (USPTO). Uyte, LLC was incorporated in early April and the trademark applications were filed between April 16 and April 23. In order of filing the application, the marks are:

Utah Hockey Club

Utah H.C

Utah rage

Utah gif

Snowstorm in Utah

Utah Yetis

Utah Outlaws

Utah ice cream

Utah Mammoth

Each of the marks is intended for trademarked clothing and related goods and for entertainment, especially ice hockey exhibitions.

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No logos?

All applications are for ‘standard features’, which means the brand owner can use any design containing those words and, more importantly, others cannot use their own designs with those words. This gives the franchise the ability to do whatever it wants in terms of designs that include these words.

Here’s the problem. The basis of trademark rights is ‘use in commerce’. You can’t just trademark every logo you come up with. If you are the first to use the mark in commerce, you have trademark rights against the use by others of that mark or of marks that are confusingly similar. The federal registration system lets everyone know that you are the owner and that you are using the mark in commerce.

So how does the Utah NHL franchise navigate nine different trademark registrations with the team name yet to be determined? That’s because the Lanham Act contains a provision that allows a person who has “a bona fide intent to use a trademark in commerce” to register.

This begs the question…does the franchise have a “bona fide intent to use all nine points”? Isn’t it true that the team has a bona fide intention to conduct an online poll of fans to decide which of the nine numbers it will use as its NHL team name? There is little case law on this topic, but courts have firmly said that the intention to retain rights to the brandis not enough. In fact, the Trademark Trial and Appeal Board (TTAB) has provided an example of a situation that casts doubt on the bona fide nature of intent, where the applicant has filed “numerous intent-to-use applications for a variety of desirable trademarks that are intended to be used’. on (a) single new product.

In short: you cannot reserve dinner at nine different restaurants before 7 p.m. on Friday evening if you know you are 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 Benefit, clearing the way for a federal registration, after which the club has six months to prove its use in commerce. With the NHL Draft taking place in late June and training camps opening in September, you would expect the team to have a name within that six-month window.

Personally, if I were to advise the franchise owners, I tell them that with nine intent-to-use trademark applications for one hockey team, they should go a step further in choosing a team name if they want to avoid a trademark opposition proceeding. .

The contents of this article are intended to provide general guidance on the subject. Specialist advice should be sought regarding your specific circumstances.