Utah Hockey’s Name Game: Navigating Trademark Challenges
Utah Hockey’s name game journey to establishing its permanent identity showcases the intricate dance between sports branding and trademark law. As the newest NHL franchise settles into its temporary name, behind the scenes, a complex trademark process unfolds with important lessons for businesses of all sizes.
The “Utah Hockey Club” Placeholder
When the Arizona Coyotes (RIP Arizona Coyotes, being from Arizona and Coyotes Fans in our firm) relocated to Utah in April 2023, owner Ryan Smith faced a pressing timeline. Rather than rushing a permanent identity, the organization opted for the temporary “Utah Hockey Club” name, allowing time for a thoughtful branding process while beginning operations.
This interim approach highlights a strategic consideration: sometimes a placeholder identity serves better than a hasty permanent one. The organization continues to evaluate potential names while building community engagement through the process.
Pending Trademark Applications
Public trademark records reveal several applications filed by Smith Entertainment Group, including potential names like:
These “intent-to-use” applications indicate the organization’s serious consideration of multiple options while securing legal protection before final selection.
Filing Trademark Extensions for Statements of Use
A critical aspect of the trademark process is the Statement of Use (SOU) requirement. When filing an intent-to-use trademark application, applicants eventually must demonstrate actual commercial use of the mark. If not ready for commercial use when the USPTO approves the application, businesses can request extensions.
Requirements for Filing an Extension
To file an extension for a Statement of Use, applicants must:
- Submit within deadline: File before the six-month deadline from receiving Notice of Allowance
- Demonstrate continued intent: Show genuine intention to use the mark commercially
- Pay required fees: Currently $150 per class of goods/services per extension
- Complete necessary forms: File USPTO Form 1581
- Provide good-faith reasoning: Explain why additional time is needed
Extension Timeline and Limitations
The USPTO allows up to five six-month extensions, providing a maximum of 36 months from the Notice of Allowance date to begin using the mark commercially. Each extension requires a separate filing and fee.
Critically, applicants must demonstrate a continued good-faith intention to use the mark. Requesting extensions merely to block competitors or without genuine plans for use could jeopardize trademark rights.
Strategic Considerations
The Utah Hockey Club’s approach offers valuable insights for businesses:
- Placeholder strategy: Sometimes a temporary identity allows better long-term positioning
- Multiple applications: Filing for several options provides flexibility while securing protection
- Community engagement: The name selection process itself builds audience investment
- Extensions as tools: Trademark extensions offer valuable time for proper market preparation
Conclusion
As Utah’s hockey fans await their team’s permanent identity, the behind-the-scenes trademark process demonstrates the careful balance between brand development, legal protection, and market strategy. Whether you’re launching an NHL franchise or a small business, understanding trademark extension requirements provides crucial flexibility in bringing your brand to market properly prepared.
For businesses navigating similar trademark journeys, consulting with qualified intellectual property counsel remains essential to properly navigate these complex processes and timelines.
