Estimated read time: 5-6 minutes
SALT LAKE CITY — On July 23, 2020, the Seattle Kraken was announced as the name for the NHL's newest expansion franchise.
At the same time, the team filed numerous trademark applications with the United States Patent and Trademark Office, including the now familiar "S" logo, "Seattle Kraken" and even the phrase "Release the Kraken."
However, just days later, the two applications for the "Release the Kraken" slogan were expressly withdrawn by the team. There was no comment or waiting for them to be abandoned — they were intentionally removed.
Why?
It turns out that Kraken Rum already had a trademark for the slogan and, while we have to speculate some here, it's likely no coincidence that the rum company was announced as one of the team's first official sponsors.
It seems to have come down to this: Why fight in court when you can have a mutually beneficial agreement?
A similar type of deal could be coming to the Utah Hockey Club.
Earlier this month, the USPTO refused the application for "Utah Yetis," citing a "likelihood of confusion" with previously registered marks. All of those marks came from one company: Yeti, the cooler company.
So if the Utah Hockey Club wants to be the Utah Yeti or Yetis next season — as members of the organization have certainly hinted at — the team will have to find a way around those issues.
Assuming that's what the team wants, what are the next steps?
For that answer, we turned to attorney Jason Sanders, who specializes in intellectual property law (he even represented Dirty Dough Cookies in Utah's infamous "Cookie Wars" case).
"They'll file a response to the office action, and they'll just walk through each of the issues," Sanders said.
The USPTO has identified five issues with the "Utah Yetis" trademark application: likelihood of confusion, prior-filled applications, a lack of a disclaimer, a lack of real address, and identification of services.
Some of those are fairly easy to rectify, with the last three boiling down to nothing more than administrative issues. One, though, poses more of a challenge.
"That first one — the likelihood of confusion — is the big one," Sanders said.
Yeti has a mark for clothing, containers and even one for organizing sporting events (more sportsmen events like ice fishing than ice hockey, but still). The "Utah Yetis" application was looking to sell things in the same space with the same name — and will be involved in some sporting events themselves. So it's not a surprise the initial application was refused.
"They're just saying, 'Hey, look, you're both in the clothing space, you both have the word Yeti' — it's an easy call; it's likely that people will get confused," Sanders said.
But it's not uncommon for applications to get initially refused. You can almost think of it as the beginning of a negotiation. Now, it's Utah's turn to respond. The team will have until the beginning of April to make its case that there won't be confusion.
The USPTO uses the 13 Dupont factors to determine the likelihood of confusion between trademarks. Some of the key factors will be hard for Utah's NHL team to argue against (similarity of the marks and nature of the goods and services).
The good news for Utah is no single factor is decisive and there is one that could tip the scales in its favor: similar trade channels.
"This is where there's a massive difference, right?" Sanders said. "No one's going to be buying a Utah Yeti shirt mistakenly thinking they're buying a Yeti cooler T-shirt. If I was responding to this office action, that's where I would be hanging my hat the most."
Sanders said he'd also point out that sporting goods consumers often know "exactly what they want" and aren't likely to be confused over a sports team with the same name.
"I think in this case, because the trade channels used are so massively different and the kind of consumer you go after, I would think that there's a good chance you could get it through," Sanders said.
But, he said, there is also an easier way.
"You could just come to an agreement with Yeti," Sanders said. "There's an agreement called either consent or co-existence agreement where you just say, 'Hey, we're both going to agree that we're selling in different channels, and it's OK to move forward.'"
Following its inaugural season, the Las Vegas Golden Knights entered into a co-existence agreement with the U.S. Army over the Golden Knights name. It allowed the hockey team to file for trademark rights, while still allowing Army, whose parachute team is called the Golden Knights, to also still use the name.
A similar type of agreement was likely struck between the Seattle Kraken and Kraken Rum.
"I wouldn't be surprised if suddenly Yeti coolers become a sponsor of the Utah Yetis at some point down the road," Sanders said. "It just seems like something Ryan Smith would do. Instead of making it a negative, let's just make this a positive."
That would also be the quickest route to getting a trademark. And for a team looking to announce a permanent name and brand for the 2025-26 season, speed is important.
And with Yeti being a sponsor of the NHL — you can even buy Utah Hockey Club Yeti drinkware — Sanders thinks the league might help put some pressure on Yeti to "play nice" with its new team.
"I would counsel them to try to get a co-existence agreement with Yeti coolers, because then all the likelihood of confusion, all the prior file applications disappear," Sanders said. "You just wipe all those big issues away and you get this thing through as fast as possible."
Regardless of what happens, a name should be ready in time for next season.
"We will continue to involve the community in the final stages of the naming and branding process and are fully on track with our plans to announce a permanent name and identity ahead of the 2025–2026 NHL season," Utah Hockey Club president Chris Armstrong said in a statement.
