Erika Herrmann
“Hockey belongs in the desert,” at least according to the Arizona Coyotes,[1] their fans,[2] and their former owner.[3] The team played their final National Hockey League (“NHL”) game in April: after the season closed, they were deactivated and refranchised as the Utah Hockey Club, (temporarily) playing nameless, logo-less, and mascot-less in Salt Lake City. The decision came abruptly, after owner Alex Meruelo was unable to secure a land agreement for constructing a suitable new stadium.[4] Now, it would seem, hockey belongs in Utah.
Moving a major league sports team is a complicated business. But as long as leagues are given autonomy in franchise rehoming by the U.S. Sherman Antitrust Act, it will likely be a continuing practice—arguably even with increasing frequency.[5] And sports franchises themselves have been empowered by some courts to enable relocation even without league approval.[6]
It’s not a stretch to say moving is a familiar feat for this franchise. Before there were the Arizona Coyotes in Tempe, the team played in Phoenix, and before they were the Coyotes at all, they were the Winnipeg Jets in Manitoba, Canada.[7] Much like the Coyotes fleeing the desert, the Jets’ flight from hockey’s homeland was hardly a long-term plan. The team had been operating at a loss for too long and needed new ownership. Searches for local buyers were looking bleak; fans protested the move and the Canadian federal government postponed the decision.[8] Ultimately, without a serious offer to buy the team and keep it in Canada, NHL Commissioner Gary Bettman had to send the franchise south.[9] The move to Phoenix was made official in July 1996, and that October saw the Coyotes’ inaugural season underway.[10]
Despite being similarly abrupt, the move to Utah has left something behind: all of the team’s intellectual property (“IP”) is currently in the hands of the NHL.[11] Actually, all of the team’s name and branding assets were in the hands of Meruelo, who then signed them over to the League.[12] When the team started in Arizona, it had a whole package of IP to its name—not to mention, it had a name.[13] The Coyotes’ branding had been in the works since 1994, inspired by the Kachina dolls of the local Hopi people, and used by the League for the 1996 season after getting approval from Hopi leaders.[14]
IP rights can be complicated, but they’re important to the business of sports. 2024 has seen several high-profile lawsuits relating to unauthorized brand association, copyright, and trademark issues (just to name a few).[15] IP in sports is so intensely protected and litigated because it was worth something in the first place. An active counterfeit merchandise market hurts the economic value of a team.[16] And this is so because the licensed merchandise brought it value in the first place. From the moment the move was announced, Utah was given mere months to create a name for itself in the eyes of fans and in the Federal trademark registry.
The Utah franchise filed nine intent-to-use (“ITU”) trademarks with the US Patent & Trademark Office (“USPTO”), and of them, Utah Hockey Club was the only one to see some ice time.[17] The USPTO allows an ITU filing premised on a good faith intention for the mark to actually be used in commerce, with a six-month grace period that can be extended up to 36 months.[18] As for the remaining marks, some made it into the final stage of a fan vote for the franchise’s new name, with more traditional titles among the options such as “Utah Blizzard” and “Utah Yeti.”[19] But a new title has yet to be bestowed upon the team, and with no impending announcement in sight, it seems that the Utah Hockey Club will be stuck with no logo to stick on its jerseys for the foreseeable future. The NHL is planning on selling official jerseys with “UTAH” stretched across them any minute now.[20] Unfortunately, they’re not the first to it: a quick online search reveals that the unlicensed replica market is already in full swing.[21]
The franchise won’t be so faceless forever. Legally (and practically) they can really only intend to use one name at a time, so it’s like only a matter of time before something slightly more marketable is announced to be hitting the ice. As of November 5th, 2024, the name “Utah Hockey Club” has been refused registration from the UTPTO for being “primarily geographically descriptive” according to Section 2(e)(2) of the Trademark Act.[22] Trademark registration refusal at this stage of an application isn’t the end by any means, and the franchise has plenty of time to petition the decision or request an extension. Maybe hockey belongs in Utah, but for right now, “Utah Hockey Club” doesn’t belong on the Principal Register.
[1] John Marshall, Party’s over: Coyotes end tenure in the desert with raucous atmosphere before move, The Associated Press (April 18, 2024), https://apnews.com/article/arizona-coyotes-salt-lake-city-edmonton-oilers-eeda263ee9dc5a862ec8e41e327c8553 [https://web.archive.org/web/20241111201234/https://apnews.com/article/arizona-coyotes-salt-lake-city-edmonton-oilers-eeda263ee9dc5a862ec8e41e327c8553].
[2] @PHNX_Hockey, X (Apr. 18, 2024, 8:04 PM), https://x.com/PHNX_Hockey/status/1781111628412735978 [https://perma.cc/Z9TN-KWVZ].
[3] Lauren Merola, Alex Meruelo says ‘hockey belongs in the desert,’ details plan to bring NHL team back to Arizona, The Athletic (April 18, 2024), https://www.nytimes.com/athletic/5428046/2024/04/18/alex-meruelo-coyotes-relocation-comments/ [https://perma.cc/KL33-69RA] [https://web.archive.org/web/20241111202302/https://www.nytimes.com/athletic/5428046/2024/04/18/alex-meruelo-coyotes-relocation-comments/].
[4] Jon Alfano, Former Owner Gives Up Coyotes Rights, Break Away on SI (July 10, 2024), https://www.si.com/onsi/breakaway/news-feed-page/posts/arizona-coyotes-owner-alex-meruelo-gives-up-rights [https://perma.cc/5AF8-4PMV] [https://web.archive.org/web/20241111202524/https://www.si.com/onsi/breakaway/news-feed-page/posts/arizona-coyotes-owner-alex-meruelo-gives-up-rights].
[5] Jack Noonan, The Boom in Franchise Relocations: Moving Cities No Matter the Cost, 6 Mississippi Sports L. Rev. 223, 223.
[6] Nathaniel Grow, Regulating Professional Sports Leagues, 72 Wash. & Lee L. Rev. 573, 613.
[7] Greg Wyshynski, Bettman and the Jets: Tales from the NHL’s flight from Winnipeg, Yahoo Sports (May 30, 2011), https://sports.yahoo.com/blogs/nhl-puck-daddy/bettman-jets-tales-nhl-flight-winnipeg-232407675.html [https://perma.cc/6LEV-JPQT] [https://web.archive.org/web/20241111202749/https://sports.yahoo.com/blogs/nhl-puck-daddy/bettman-jets-tales-nhl-flight-winnipeg-232407675.html].
[8] Id.
[9] Id.
[10] Hector Gonzales, Timeline: A look at the Coyotes' time in Arizona, ABC15 Arizona (April 16, 2024), https://www.abc15.com/sports/timeline-a-look-at-the-coyotes-time-in-arizona [https://perma.cc/K9A6-9L8F] [https://web.archive.org/web/20241111203443/https://www.abc15.com/sports/timeline-a-look-at-the-coyotes-time-in-arizona].
[11] See Alfano, supra note 4.
[12] Id.
[13] Alex Kinkopf, The Creation of the Kachina Coyote Logo, NHL News (May 1, 2020), https://www.nhl.com/news/the-creation-of-the-kachina-coyote-logo-316790284 [https://perma.cc/SH3H-BTKM] [https://web.archive.org/web/20241111203824/https://www.nhl.com/news/the-creation-of-the-kachina-coyote-logo-316790284].
[14] Id.
[15] Lindsay Jones, Guarding the Brand: Intellectual Property Challenges in Sports, Att’y At L. Mag. (Sep. 26, 2024), https://attorneyatlawmagazine.com/public-articles/intellectual-property/guarding-the-brand-intellectual-property-challenges-in-sports [https://perma.cc/8AZY-MNBW] [https://web.archive.org/web/20241111204031/https://attorneyatlawmagazine.com/public-articles/intellectual-property/guarding-the-brand-intellectual-property-challenges-in-sports].
[16] Sara Desai, Fake it Till You Make it: Sports Counterfeiting, Villanova Univ.: Moorad Sports L. J. Blog (Oct. 21, 2022), https://www1.villanova.edu/villanova/law/academics/sportslaw/commentary/mslj_blog/2022/fakeittillyoumakeitsportscounterfeiting.html [https://perma.cc/4A5S-N7RP] [https://web.archive.org/web/20241111234950/https://www1.villanova.edu/villanova/law/academics/sportslaw/commentary/mslj_blog/2022/fakeittillyoumakeitsportscounterfeiting.html].
[17] John H. Dollarhide, New Utah NHL Team Takes Shot-Pass with Nine Intent-to-Use Trademark Applications, Butler Snow: BizLitNews Blog (May 6, 2024), https://www.butlersnow.com/news-and-events/new-utah-nhl-team-takes-shot-pass-with-nine-intent-to-use-trademark-applications [https://perma.cc/B9XJ-LFQU] [https://web.archive.org/web/20241111204520/https://www.butlersnow.com/news-and-events/new-utah-nhl-team-takes-shot-pass-with-nine-intent-to-use-trademark-applications].
[18] 15 U.S.C. § 1051.
[19] Trent Wood, Possible names for Utah’s NHL team whittled down to 6, Deseret News (June 6, 2024), https://www.deseret.com/sports/2024/06/06/utah-hockey-team-name-vote-second-round [https://perma.cc/WW5V-TQZQ] [https://web.archive.org/web/20241111205324/https://www.deseret.com/sports/2024/06/06/utah-hockey-team-name-vote-second-round/].
[20] Nicholas J. Cotsonika, Utah Hockey Club ‘really proud' of inaugural jersey design with Fanatics, NHL News (September 21, 2024), https://www.nhl.com/news/utah-hockey-club-proud-of-inaugural-jersey-design [https://perma.cc/3W4U-QTVN] [https://web.archive.org/web/20241111210809/https://www.nhl.com/news/utah-hockey-club-proud-of-inaugural-jersey-design].
[21] @tatenhomas, X (Sep. 9, 2024), https://x.com/tatenhomas/status/1833338175970021493 [https://perma.cc/CF7C-JSTZ].
[22] U.S. Trademark Application Serial No. 98502937 (filed Apr. 16, 2024).