What if you’ve thought of the perfect new business or product name — but it’s already being used by someone else?
Under U.S trademark law, the answer often boils down to the likelihood of confusion between the two trademarks. See 15 U.S.C. § 1052(d). If your shiny new business name is identical to one already in use, registration may prove difficult, and the risk of infringement could be high.
However, if your company’s underlying goods and services are distinct from the first user, you may be able to register the trademark anyway.
For example, the word COLGATE is trademarked by the famous Colgate toothpaste maker – but also by Colgate University for its educational services. These trademarks coexist because the products (toothpaste and college education) are so different that there is little chance that consumers will be confused by the source.
But as the Utah Hockey Club recently learned, it is rarely that easy. As the NHL’s newest team, the Utah Hockey Club was widely expected to adopt the name “Utah Yetis” this year. In preparation, the team began the process of registering the trademark “UTAH YETIS” as a potential team name and for merchandise like jerseys, t-shirts and hats.
Registering a trademark gives you the exclusive right to use your trademark for select goods and services. It also means the USPTO will actively reject other trademark applications that would infringe on yours. In hockey terms, the USPTO becomes an “enforcer” that protects registered trademarks.
Unfortunately for the Utah Hockey Club, the enforcer came to play.
The problem? The well-known YETI Coolers company already owns “YETI” trademarks for a wide array of products and services – apparel included. As a result, the Hockey Club’s application for “UTAH YETIS” was denied, notwithstanding that “UTAH YETIS” and “YETI” aren’t exactly alike.
The Utah Hockey Club hasn’t given up hope though. Last week, the club requested an extension of time to respond to the USPTO’s denial. This could mean they’re trying to strike a deal with YETI Coolers that may allow both trademarks to coexist in the apparel space. It remains to be seen whether the two sides will reach a deal.
Companies interested in protecting their brand identity should consult with a trademark lawyer to determine whether their business name, product names, and logos are (1) infringing on existing, registered trademarks, and (2) eligible for trademark protection of their own. It is wise to do so before expending substantial time and resources on new branding that, like the Utah Yetis, you might be prevented from using.
Ryan Dovel works with the Intellectual Property Practice Group at Blanco Tackabery. Harnessing his experience as a law clerk at the North Carolina Business Court, Ryan represents individuals and businesses in civil litigation. In addition, he practices in other areas such as municipal law, and fiduciary litigation.