Thursday, February 21, 2013

Yankees Win! TTAB Sustains Opposition to "BASEBALLS EVIL EMPIRE" on Confusion and False Association Grounds

Although the New York Yankees have never used the mark EVIL EMPIRE nor applied to register same, the Board sustained its opposition to registration of BASEBALLS EVIL EMPIRE, in standard character form, for "clothing, namely, shirts, t-shirts, sweatshirts, jackets, pants, shorts and hats." The Board found that the Yankees acquired prior rights in the mark EVIL EMPIRE, that the mark has become famous "in identifying the Yankees," that confusion would likely result from applicant's use of the mark, and further that the applied-for mark creates a false association with the Yankees. Applicant did manage to win on one issue: the Board dismissed the Yankees' Section 2(a) disparagement claim. New York Yankees Partnership v. Evil Enterprises, Inc., Opposition No. 91192764 (February 8, 2013) [not precedential].

[Note: The TTABlog looked at this case in its early stages (here), principally noting the lack of an appropriate apostrophe in applicant's mark.]

Likelihood of Confusion: Applicant admitted that the Yankees had been referred to as the "Evil Empire" prior to the filing date of the opposed application. That took care of the priority issue. The Yankees established rights in the EVIL EMPIRE mark by showing that the public associated the mark with the Yankees. [As an (un)interesting side note, the term EVIL EMPIRE for the Yankees was coined by Larry Lucchino, president of the Boston Red Sox. When he heard the news that Cuban pitcher Jose Contreras had signed with the Bronx Bombers rather than the Carmine Hose, Lucchino reportedly said "The evil empire extends its tentacles even into Latin America."]

The Yankees submitted hundreds of articles and stories using the EVIL EMPIRE moniker for the Yankees. The Yankees claimed that they "implicitly embraced" the EVIL EMPIRE concept by adopting music and other indicia from the STAR WARS movie.

Applicant admitted that "the New York Yankees baseball team has been referred to and known as the 'Evil Empire' by the press, fans, media, other Major League baseball teams and/or public."

The Board therefore found that EVIL EMPIRE, when used in connection with baseball, refers to the Yankees.

Applicant argued that the Yankees did not acquire rights because "[t]oo many baseball teams are now referred to by the media as an 'Evil Empire.'" The Board, however, was unimpressed by the few stories that applicant relied upon. "In short, the record shows that there is only one EVIL EMPIRE in baseball and it is the New York Yankees."

Next the Board found that the mark EVIL EMPIRE, in the world of baseball, has become famous "in identifying the Yankees for the purposes of likelihood of confusion."

The clothing items identified in the opposed application are identical to products sold by the Yankees under its various marks. There are no restrictions in the application, and the goods include everyday items purchased on impulse.

As to the marks, the Board not surprisingly found them to be similar in appearance, sound, connotation and commercial impression. The added word BASEBALLS in the opposed mark increases the likelihood of confusion by defining applicant's field of use.

Balancing the relevant du Pont factors, the Board found confusion likely.

Applicant argued that its mark is a "spoof and parody," but the Board observed that parody is not a defense if the marks at issue are "otherwise confusingly similar."

False Association: The Board found that applicant's mark is a close approximation of Opposer's previously used name or identity, that applicant's mark points uniquely and unmistakably to the Yankees (which, based on applicant's website, is what applicant intended), that applicant has no connection with the Yankees, and that the evidence shows sufficient fame for the EVIL EMPIRE mark that use of BASEBALLS EVIL EMPIRE will falsely suggest a connection with the Yankees.

Disparagement: This claim was undermined by the Yankees' own statement that it "implicitly embraced" the EVIL EMPIRE designation. The Board concluded:

having succumbed to the lure of the dark side, opposer will not now be heard to complain about the judgment of those who prefer the comfort of the light.

And so the Yankees prevailed in this opposition.

Read comments and post your comments here.

Text Copyright John L. Welch 2013.


At 8:33 AM, Blogger Unknown said...

"...the record shows that there is only one EVIL EMPIRE in baseball and it is the New York Yankees."

The best part is the Yankees were arguing they are BASEBALLS EVIL EMPIRE! I look forward to reading the full opinion.

At 11:17 AM, Anonymous Keith the Cub Fan said...

I would say this opinion is "Amazing", but the Mets will sue me, or "Holy Cow", but the Estate of Harry Caray will sue me.

At 2:49 PM, Blogger tim maguire said...

This is kind of a stunning decision. Yes, to the extent that someone might think of a baseball team when hearing it, the baseball team they're thinking of is likely to be the Yankees, but none of the people thinking of the Yankees would think the term is being used by the Yankees.


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