Saturday, November 28, 2009

New York Yankees Oppose "BASEBALLS EVIL EMPIRE" For Clothing

In a case reminiscent of last year's SEX ROD opposition [TTABlogged here], the New York Yankees have opposed registration of the mark BASEBALLS EVIL EMPIRE (in standard character form) for clothing, claiming that the mark is disparaging, or suggests a false connection, or is likely to cause confusion. The notice of opposition contains no citations to the Trademark Act, but presumably the Yankees are relying on Sections 2(a) and 2(d). New York Yankees Partnership v. Evil Empires, Inc., Opposition No. 91192764.

Non-use? The Yankees got off to a rocky start by alleging that "Applicant did not use the BASEBALLS EVIL EMPIRE mark for the goods covered in the Application in United States commerce prior to its constructive first use date of July 7, 2008." Actually, the opposed application is based on intent-to-use, not actual use, but what the heck?

Disparagement: The Yankees brag that they have been "commonly and extensively referred to by the press, media, fans and the public by the designation the 'Evil Empire,'" pointing out that this term "was originally coined by the CEO of the BOSTON RED SOX club, an arch rival of the YANKEES Club, as a derogatory reference to Opposer." Nonetheless, say the Yankees, "the BASEBALLS EVIL EMPIRE mark will be understood to refer to the Club, and, upon information and belief, is clearly intended to do so, and thus may disparage Opposer, or bring Opposer into contempt or disrepute among a significant segment of the consuming public."

Likelihood of Confusion: On the other hand, maybe the term EVIL EMPIRE isn't so bad: "[C]ertain Yankees fans [the really obnoxious ones - ed.] have embraced the 'Evil Empire' designation, viewing it as a badge of honor reflecting the Club’s success, and other supporters in the press and media have also made ongoing use of the designation EVIL EMPIRE to identify the Club and tout its accomplishments." According to Opposer, "[t]his widespread public usage of the designation EVIL EMPIRE, alone and with other words conjuring up a force to be reckoned with, such as “EVIL EMPIRE STRIKES BACK,” inures to the benefit of the Club as significant usage on its behalf." Therefore, according to the Yankees, the opposed mark BASEBALLS EVIL EMPIRE is likely to cause confusion as to the source of Applicant's good.

False Connection: Finally, the Yankees throw in a Section 2(a) claim, strangely alleging that Opposer "would be further injured by the granting of a certificate of registration to Applicant because Applicant’s BASEBALLS EVIL EMPIRE mark would falsely suggest a connection between Applicant and Opposer." [Isn't it use of the mark that will cause the false suggestion of a connection, not the granting of the registration? - ed.]

Let's keep our eyes on this one. How do you think it will come out? Should Applicant's failure to include an apostrophe in the word "Baseball's" be a ground for opposition?

Text Copyright John L. Welch 2009.


At 5:10 PM, Anonymous Anonymous said...

The Yanks could have alleged that "Evil Empire" is "merely descriptive" of them.

Keith (a Yankee-hater from NYC)

At 2:31 PM, Blogger Catherine said...

I agree with you, John - the most disparaging (and annoying!!) aspect of applicant's mark is the failure to use an apostrophe - who would want to be associated with that? And I must say as a Philadelphia resident I must agree with Anonymous as well.


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