If you’re thinking of adopting a trademark for your business, especially a mark that is already being widely used—even if used in a completely different industry than yours—there are some things to consider.
The USPTO’s Classification of Goods & Services
The United States Patent and Trademark Office (USPTO) classifies goods and services into different categories, or classes, for trademark registration. These classes help define the goods or services with which a mark is or will be used, making it easier to search for and identify potential conflicts.
There are 45 classes in total: classes 1–34 cover goods, ranging from chemicals and machinery to clothing and toys, while classes 35–45 cover services, such as advertising, legal services, and entertainment services. Each class has a detailed description outlining the specific goods or services it covers. For example, Class 25 includes clothing, footwear, and headgear, while Class 41 encompasses education and entertainment services.
These classifications are essential for businesses and legal professionals to ensure that trademarks are accurately registered and protected within the correct categories—and also enable a mark to be registered in different classes and industries.
Case Studies—Companies Sharing the Same Registered Trademark in Different Industries
Dove Soap and Dove Chocolate
Dove soap and Dove chocolate, directed to distinct goods, are owned by different companies and both have registrations for the mark DOVE on the Federal Register:
- DOVE is a registered trademark by Unilever in Class 3, which includes items like soaps, cosmetics, and cleaning products.
- DOVE is a registered trademark by Mars, Incorporated in Class 30, which includes confectionery and chocolate products.
Since Dove chocolate and Dove soap are registered and used in different classes of goods and cater to different markets (personal care vs. candy), the trademark registrations for the same mark DOVE have seemingly been able to coexist on the Federal Register.
Los Angeles Kings and the Sacramento Kings
What happens when two trademark registrations are obtained in the same industry and are for near identical word marks?
Consider two different sports teams in California, the Los Angeles Kings and the Sacramento Kings—both pro sports teams, both “Kings.” The two teams each operate in different sports leagues and contexts. While both teams use the name “Kings,” their overall branding is distinguishable:
- Los Angeles Kings are an NHL (National Hockey League) team.
- Sacramento Kings are an NBA (National Basketball Association) team.
Trademark protection is not limited to just the names of the brands or businesses, but also extends to the overall branding associated with the goods and services, like the logos, designs, colors, and other source indicia. Even though “Kings” is a common word, the Los Angeles Kings have built a strong brand identity around it, especially in the context of professional hockey. The Los Angeles Kings adopted their name after a 1966 contest asking for entries to name Los Angeles’ new NHL team. The name “Kings” was entered 31 times, and was possibly chosen as a nod to the former minor league hockey team, also royally named, the Los Angeles Monarchs.
As for the Sacramento Kings, in the 1970s, the NBA team used to call Kansas City home, where the team chose to rename itself from “Royals” to the more alliterative Kansas City “Kings” to avoid confusion with the Royals baseball team presiding in Kansas City. When the NBA team moved from Kansas City to Sacramento, the team kept the name “Kings.”
The context in which each team uses the name “Kings” is unique to their respective sports leagues, which may help avoid consumer confusion. Additionally, the overall branding and fan base for each team are distinct, further reducing the likelihood of any confusion.
Utah Hockey Club’s Name Search—Utah Yeti and Yeti Coolers
Utah Hockey Club (“UHC”) is seeking to rebrand by establishing a new permanent team name following their move from Arizona to Utah. The organization adopted “Utah Hockey Club” for its inaugural season, but sent out a fan vote in search of a new name to kick off its 2025–2026 season. The vote resulted in six finalist nicknames: Utah Blizzard, Utah HC (Hockey Club), Utah Mammoth, Utah Outlaws, Utah Venom, and Utah Yeti.
The UHC went on to pursue a trademark registration for “Utah Yetis,” filing an application with the USPTO in April 2024. In its application, it filed a trademark in two classes: Class 25 (e.g., clothing), and Class 41 (e.g., ice hockey entertainment). On January 9, 2025, the USPTO issued an Office Action, provisionally refusing registration of the mark. The Action cited multiple reasons for refusal of registration, including a likelihood of confusion with a number of third-party marks belonging to Yeti Coolers, LLC, which are also directed to Class 25 goods.
Yeti Coolers, best known for its drinkware, coolers, and clothing, has trademark registrations in a wide variety of Classes, such as Class 6 (e.g., metal goods), Class 17 (e.g., drink holders), Class 25 (e.g., clothing), and Class 21 (e.g., coolers). These classifications, while required for trademark registration, also help Yeti Coolers protect its brand across different product categories in the identified goods and services.
In considering a refusal based on Yeti Coolers’ marks, the examining attorney for UHC’s application assessed 1) the similarities between the compared marks and 2) the relatedness of the goods and/or services. First, in assessing the similarities and comparing the marks, the examining attorney found that the word “YETIS,” which was the more dominant element of the “UTAH YETIS” mark, was essentially identical (regardless of singular or plural form) in sound, appearance, meaning, and commercial impression, and thus confusingly similar to Yeti Coolers’ “YETI” registration. Next, the examining attorney stated that the goods were identical, and thus, so were the channels of trade and class of purchasers. The examining attorney ultimately stated that the marks were confusingly similar, and referred to closely related goods, so consumers would be likely to mistakenly believe that the goods emanated from a single source, and refused registration to goods in Class 25 under Trademark Act Section 2(d).
However, the UHC may dispute the refusal by filing a response to the Office Action. To date, the UHC hasn’t filed a response, and it’s unclear whether the UHC will keep trying to make “Yeti” happen.
Co-existence agreements considered
Word circulated that the two organizations (UHC and Yeti Coolers) considered a trademark co-existence agreement, but that Yeti Coolers ultimately did not agree to it. A trademark co-existence agreement, sometimes called a consent agreement, is a version of a settlement agreement that allows both parties to continue to use the mark under certain conditions, which the parties believe will resolve the chance for consumer confusion.
Exploring Alternatives—the Utah Mammoth?
Given the uphill battle the UHC may face with the mark Utah Yeti, the UHC also planned for the possibility of adopting the mark Utah Mammoth. UHC filed an application for the trademark “Utah Mammoth” on April 23, 2024, directed to Class 25 (e.g., clothing) and Class 41 (e.g., ice hockey exhibitions) goods and services.
On November 5, 2024, the examining attorney issued an Office Action, in which it found no conflicting marks, but noted other fairly routine issues requiring a response. UHC has until May 5, 2025, to file a response to that Office Action.
What’s Next for the UHC?
To prepare for the possibility of having to eliminate Yeti and Mammoth from consideration, the UHC again turned to its fans for feedback. During a game in late January 2025, fans reportedly gave mixed feedback opposing the name “Utah Wasatch,” so the Club could now either adopt UHC or float “Outlaws” as a new option—the fanbase may have the final say. Either way, it is important to note that UHC is being very intentional about choosing its new name to ensure that UHC will own a protectable and strong mark, with minimal risk.
What To Do if You’re Trying to Pick a Trademark?
Businesses and startups can learn from UHC’s experience picking a trademark for their brand. When choosing a trademark for your company, here are some important steps to keep in mind and discuss with your intellectual property counsel:
- First, determine which goods and services you plan to use with your mark and to protect. Review the list of Classes of Goods and Services to assist your decision. This step includes considering an actual description of the specific goods and services for the mark, which will be needed for filing a new trademark application.
- Second, do a trademark clearance search to see if the trademark (or a similar trademark) you’re considering is already registered or in use, especially in the relevant Classes and directed to the same or similar goods and services.
- Third, once you have selected a mark that appears to be low risk based on your searching, proceed with seeking registration by filing an application to secure the earliest possible filing date.
- Work with your trademark counsel to manage your application and stay on top of deadlines, and strategize regarding the timing of the release of your brand and use of your mark.
Above all, consider following the UHC’s example on how it approached its trademark applications. Do your due diligence on trademarks you’re interested in before filing an application for registration and before launching your brand in connection with a specific mark.
If you launch your product, brand, or service before clearing your trademark without making sure that not only is it available for you to use, but it is possible to secure a registration, your company could face losing its brand name, face lengthy and costly litigation for trademark infringement, or both. Neither is what you want after an exciting new launch.
Nixon Peabody’s Trademark Portfolio Management attorneys guide clients through every step of their intellectual property journey, from initial selection of a trademark to defending and enforcing trademark rights. For more information on trademark protection, please contact your Nixon Peabody attorney or the authors of this article.