Mammoth Hockey has requested that the Utah Mammoth pause merchandise sales until the court comes to a decision on the two parties’ trademark dispute.
On Aug. 1, the Utah Mammoth filed a federal lawsuit against Mammoth Hockey, LLC, an Oregon-based company that has sold hockey bags and other merchandise since 2014. They’re seeking declaratory judgement that the “Utah Mammoth” name does not violate any rights asserted by Mammoth Hockey.
On Sept. 25, Mammoth Hockey countered with a filing of its own, seeking preliminary injunction — essentially an order to pause operations until the court comes to its conclusion. In order to be granted preliminary injunction the party must show that it is subject to irreparable harm.
In this case, Mammoth Hockey is asking that the NHL team stop selling Mammoth-branded merchandise until a conclusion is given. The Mammoth are set to release their retail jerseys for sale on Thursday.
The NHL team’s argument from the beginning has included two main elements:
- Mammoth Hockey has never owned a trademark for the name, and therefore their rights are only based on common law.
- During the team’s public naming process, the equipment manufacturer voiced support, both publicly and privately, for the team’s possible use of the name.
In the equipment manufacturer’s filing, the company argued that:
- It has sold merchandise in 47 U.S. states, including Utah, and therefore its common law rights extend across those locations.
- Potential customers who cheer for other NHL teams will be less likely to buy from them because they don’t want to show support for rivals.
- The potential damage to Mammoth Hockey is greater than the potential damage to the Utah Mammoth.
According to Cornell Law School’s Legal Information Institute, common law rights can be protected at both the state and federal levels, though it is easier to defend a registered trademark.
“Although registration is not a prerequisite to federal trademark protection, registered marks enjoy significant advantages over unregistered marks including: registration serves as nationwide constructive notice of ownership and use of the mark; ... and a registered mark may achieve incontestable status after five years of continuous use, ... which enhances the owner’s rights by eliminating a number of defenses to claims of infringement,” Cornell’s LII website states.
“We’ve poured eleven years of hard work into making gear players can trust,” said Erik Olson, co-founder of Mammoth Hockey in a press release published on PR Newswire on Tuesday. “We want to continue doing that for many years to come.”
The Mammoth are currently midway through their first preseason under their new moniker. They’ll play their first preseason game on Oct. 9.
Category: General Sports
