Thursday, December 03, 2009

NY Yankees Oppose "THE HOUSE THAT JUICE BUILT"; Applicants Assert Parody Defense

Here we go again with another case for our Hot Stove League collection. The New York Yankees have opposed two applications for the mark THE HOUSE THAT JUICE BUILT for "T-shirts, baseball caps, hats, jackets, and sweatshirts," and for "mugs," as well as a third application for the design mark shown below left for those same clothing items. The Yankees claim likelihood of confusion and dilution, disparagement, immorality, and false association (although they do not specifically cite any of the sections of the Trademark Act). New York Yankee Partnership v. Steven Lore and Jet Products and Services, Inc., Opposition No. 91189692.

Of course, baseball fans know that Yankee Stadium is often referred to as "The House That Ruth Built," and they are quite familiar with the Yankees' "top hat" logo (shown above right). The Yankees are not amused by these three applications:

"17. The term "juice" is often used as a vulgar, slang euphemism to refer to the consumption of alcohol or illegal anabolic steroids, including by injection into the body using a hypodermic needle.

18. Upon information and belief, Applicants’ Marks, which, together, incorporate the word “juice” or the image of a hypodermic needle in conjunction with well-known components of Opposer’s Marks, and which closely resemble the well-known Opposer’s Marks, are intended, and will be understood to be, an offensive reference to the consumption of alcohol or illegal anabolic steroids, and to refer to or suggest an affiliation or association with Opposer and the Club."

Applicants have filed a motion to dismiss, asserting that the Yankees have "failed to state a claim under the Lanham Act." According to Applicants, the opposed marks are non-offending parodies whose primary purpose is "to create public awareness about drug use and, in a sense, to shame Opposer and its organization for allegedly using anabolic steroids and tolerating the use of anabolic steroids."

Babe Ruth, 1921

The Yankees argue that the notice of opposition states proper claims for relief under the Lanham Act, and that parody is not a per se defense but rather one that must be resolved as part of the likelihood of confusion analysis. Moreover, the Yankees assert, First Amendment arguments are irrelevant in a TTAB proceeding, where registration and not use is at issue.

How do you think this will come out? I'm on pin(stripes) and needles!

TTABlog note: For recent TTAB parody cases, see HARRY POTHEAD (here), IVY LEAGRO (here), LESSBUCKS COFFEE (here), and SEX ROD (here), in all of which a parody defense failed.

Text Copyright John L. Welch 2009.


At 12:22 PM, Blogger Sanjiv Sarwate said...

This one is certainly a better case than HARRY POTHEAD because the nexus between the mark and the claimed parody is far stronger.

The Board's treatment of parody as a factor in the likelihood of confusion analysis is understandable from a statutory interpretation perspective, but seems intuitively to have problems. It's hard to reconcile the notion that fair use is a defense that applies notwithstanding a likelihood of confusion (KP Permanent) and parody as a factor in the likelihood of confusion analysis. Maybe it's just the fact that in copyright, parody is a form of fair use, whereas parody is an ill fit for the "use other than as a trademark" fair use defense in the Lanham Act. (After all, someone using a parodic trademark presumably does plan or is using it as a trademark.)

Maybe this calls for some kind of amendment to the Lanham Act to codify a fair use defense, much as it is in copyright. It just seems to me that the way the Board is formulating the inquiry requires exactly the kind of inquiry that KP Permanent was supposed to foreclose.

At 3:12 PM, Blogger Catherine said...

Seems to me in this case this design and slogan likely are not being used as a trademarks at all but rather are used purely as ornamentation on the items sold, an ornamental use of a parody of the Yankee trademarks. Certainly it's meant to conjure up these Yankee trademarks, but can the purpose or effect of these parodies really be seen to be source indicating? If I saw these on a shirt or mug I would see them as merely ornamental, parody alone. On that ground I'd say these aren't registrable. Maybe I should check the file history - did this issue come up?

At 8:08 PM, Anonymous Marta Randall said...

I disagree about Catherine's "mere ornamentaion" suggestion. At the very least, the parodic mark points to an originator who is most emphatically not the Yankees organization.

Hmmm. The Sox, perhaps?


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