"Let's Go Hockey Club!" does not evoke the same level of inspiration as "Let's Go Hawks!"
What's Happening with the New Utah NHL Team?
Utah will be the first team in the National Hockey League ("NHL") not to have a mascot. The team, formerly the Arizona Coyotes, will be generically rebranded as the "Utah Hockey Club" for at least the upcoming 2025-26 season.1
Utah is using this opportunity to carefully evaluate the viability of many different mascots. The team filed at least 30 different "intent-to-use" trademark applications with the United States Patent and Trademark Office ("USPTO"). Many of the trademarks are for different mascots, including UTAH ICE, UTAH MOUNTAINEERS, UTAH OUTLAWS, UTAH SWARM, UTAH SQUALL, UTAH FURY, UTAY GLACIERS, UTAH FREEZE, UTAH HIVE, UTAH CARIBOU, UTAH BLIZZARD, UTAH MAMMOTH, UTAH HC, UTAH HOCKEY CLUB, UTAH BLAST, UTAH FOST, UTAH CANYONS, UTAH POWDER, UTAH VENOM, UTAH YETIS, and UTAH BLACK DIAMONDS.2 The team has also released a series of polls to let fans vote on their favorite mascot. The team is expected to make a final decision later this year.3
What Is an Intent-to-Use (ITU) Trademark Application?
An "intent-to-use" ("ITU") trademark application allows an entity to stake its claim to a name even if they are not yet using the name in commerce. On top of the standard requirements for a trademark application, an applicant must submit a verified statement that the applicant has a "good faith" or "bona fide" intention to use the mark in commerce. An applicant must demonstrate the use of the mark in commerce within six months of receiving a notice of allowance through either an amendment to allege use (prior to approval for publication of the application) or a statement of use (after issuance), but this period may be extended up to five times for a maximum possible extension time of thirty-six months.4
Why File an Intent-to-Use (ITU) Trademark Application?
Filing an ITU trademark application provides an applicant more flexibility compared to a traditional use-based trademark application by giving additional time to evaluate a mark before commercially releasing a product or service. The strategy of filing multiple ITU trademark applications, while more costly, allows an applicant to evaluate multiple potential marks while securing a priority date for all of them. An applicant can allege "good faith" or "bona fide" intent to use the marks even if such use is contingent on market research.5
This strategy also helps to avoid issues with trademark squatters, where people try to be the first to register a trademark for a potentially valuable name with hopes of later being paid off for rights to use the name. For example, squatting issues were seen when the Washington Redskins of the National Football League decided to rebrand away from the Redskins name. One person filed numerous intent-to-use trademark applications for various Washington-based team names, including the "Washington Monuments," "Washington Redtails," "Washington Veterans," and "Washington Federals."6 While this squatting could have caused legal headaches for the team (depending in large part on whether the person in fact had a good faith intention to use the marks), the team ultimately went in a different direction, choosing the name "Washington Commanders."
Conclusion
Utah's strategy with ITU trademark applications demonstrates how companies can maintain maximum flexibility with their brands before fully committing to a particular mark.
Footnotes
1. https://www.espn.com/nhl/story/_/id/40344646/new-utah-team-use-utah-hockey-club-inaugural-season
2. USPTO trademark search for "Uyte, LLC," conducted June 26, 2024
3. https://www.nhl.com/news/utah-announces-6-finalists-for-team-name
4. https://www.uspto.gov/trademarks/apply/intent-use-itu-applications
5. See Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha, 1993 TTAB LEXIS 6, *12 n.7 (Trademark Trial & App. Bd. February 3, 1993) ("An applicant's bona fide intention to use a mark must reflect an intention that is firm, though it may be contingent on the outcome of an event (that is, market research or product testing).")
6. https://www.cbsnews.com/news/washington-redskins-name-trademark-martin-mccaulay/
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
