Monday, April 17, 2023

Precedential No. 12: TTAB Hands Win to MLBPA and Aaron Judge In Opposition to Judicial-Themed Trademarks for Clothing

Michael P. Chizena went down swinging in this consolidated opposition to his applications to register the word marks ALL RISE and HERE COMES THE JUDGE and the design mark shown below, for "clothing, namely, t-shirts, shirts, shorts, pants, sweatshirts, sweatpants, jackets, jerseys, athletic uniforms, and caps." The Board found his proposed marks to be confusingly similar to the opposers' previously used marks for overlapping goods, and so it sustained the opposition on the Section 2(d) ground, declining to reach the opposers' Section 2(a) false connection and Section 43(c) dilution claims. Major League Baseball Players Association and Aaron Judge v. Michael P. Chisena, 2023 U.S.P.Q.2d 444 (T.T.A.B. 2023) [precedential] (Opinion by Judge David K. Heasley).

Applicant Chisena, a Long Island resident purportedly oblivious to the meteoric ascent of Aaron Judge in the baseball world, filed his intent-to-use applications for the word marks on July 14, 2017, and for the design mark on October 12, 2017. By that time, Aaron Judge had established himself as a star outfielder for the New York Yankees. He was named American League Rookie of the month in April, May, and June 2017, and also American League Player of the month in June 2017. On July 10, 2017, he won the Home Run Derby at the All-Star Game. By that time, sports media, the Yankees, and Yankee fans had already adopted a "judicial theme" in promotional material, stadium signage, and various souvenir items referring to him, displaying the phrases ALL RISE and HERE COMES THE JUDGE and depictions of "judicial indicia, such as a gavel, courthouse image, or the scales of justice, accompanied by his name or likeness.

"Standing": Chisena contended that the opposers lacked "standing" to bring their claims, but the Board would not stand for it. Judge authorized his union, Opposer MBPLA, to license rights to use his name and likeness, as well as other words and designs referring to him, on apparel and other goods. (Use of his claimed marks inured to his benefit. Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1035 (TTAB 2017); see also Monster Energy Co. v. Lo, 2023 USPQ2d 87, at *12 (TTAB 2023)). Moreover, Mr. Judge retained the right to enter into endorsement contracts with other entities, such as adidas, Under Armour, and Rawlings, the value of which could be undermined by unauthorized use and registration of confusingly similar marks on athletic wear. Thus, Judge had a real interest in protecting against unauthorized use of confusingly similar marks on apparel.

MLBPA had a real interest based on Judge’s rights because he joined the union as a member, and authorized it to act as his licensing agent and to enforce his rights. See Mystery Ranch, Ltd. v. Terminal Moraine Inc., 2022 USPQ2d 1151, at *14, *17 (TTAB 2022) (“We also have held that corporate or institutional plaintiffs may assert a real interest even where such interest in the outcome of a proceeding is based on the asserted rights of its members.”)

Priority: Applicant Chisena relied on his filing dates as his first dates. Opposers' evidence established that as of July 2017 licensees of MLBPA were selling shirts bearing the marks ALL RISE and HERE COMES THE JUDGE, some with depictions of gavels and of Aaron Judge himself, some with the words THE JUDGE and JUDGE'S CHAMBERS, and some with depictions of a baseball diamond or the scales of justice. The Board particularly noted the licensees' testimony that Aaron Judge "is the only athlete they know of who has been marketed in connection with judicial phrases and symbols, as a play on his surname." [What about Johnny Bench? David Justice? - ed.].

Chisena argued that the opposers failed to prove that their alleged common law marks serve as source indicators, but the Board found that "fans perceive these judicially-themed slogans as a direct and unmistakable reference to Opposer Aaron Judge, as a play on his judicial-sounding surname." For example, in May 2017, a fan group chose ALL RISE for their theme, and a section called "The Judge's Chambers" was opened in the right-field stands. MBPLA licensees followed suit.

These are the hallmarks of trademark use. * * * The evidence of record supports a finding that the consumers who encounter these signature slogans and symbols on t-shirts and other athletic apparel would recognize, associate, and perceive them as pointing to a single source: Aaron Judge, the one sponsoring or authorizing the merchandise. The subject slogans and symbols, as used by Opposers and their authorized licensees in the context of athletic apparel, perform that classic trademark function.

For the same reasons, the Board rejected Chisena's claim that the mark are merely ornamental or informational, and therefore to function as trademarks. "[H]ere, the record shows that the consuming public recognizes the subject slogans and symbols carrying judicial connotations as pointing to only one baseball player on one major league team, similar to the record in In re Lizzo LLC, 2023 USPQ2d 139, at *34-39 (TTAB 2023)."

Considering the applicable evidence as a whole, as if each piece were part of a puzzle, W. Fla. Seafood, 31 USPQ2d at 1663, we find by a preponderance of the evidence that Opposers have established priority of use of ALL RISE and HERE COMES THE JUDGE, as well as judicial designs such as a gavel, courthouse image, or the scales of justice, as trademarks on t-shirts, baseball caps, and other athletic apparel.
Likelihood of Confusion: The Board found that Chisena's word marks ALL RISE and HERE COMES THE JUDGE, "capture the key judicial phrasing used so frequently as a play on Aaron Judge’s name." As to his design mark:
[It] confirms the reference to baseball, framing the key judicial images against a baseball diamond background. Superimposed over the baseball field are the scales of justice, tilting toward right field, Aaron Judge’s frequent defensive position. Suspended in the scales of justice are baseballs. Striking the baseball in right field is a judicial gavel—an image frequently used to replace a baseball bat in the hands of Mr. Judge.

Moreover, Chisena's marks could be displayed in navy blue and white, the Yankees' colors, and his goods could be sold "in or near stadiums or in sports apparel stores, and where the consuming public is sports fans, particularly baseball fans, the commercial impression is unmistakable: it refers to Aaron Judge."

And so, the Board found that the marks are so similar in commercial impression that "persons who encounter the marks would be likely to assume a connection between the parties,” Cai v. Diamond Hong, 127 USPQ2d at 1801, and it sustained the opposition on the Section 2(d) ground.

Read comments and post your comment here.

TTABlogger comment: As to Chisena's design mark, the Board conclusion seems a bit off base. To what mark of opposers was it confusingly similar? Perhaps the Section 2(a) claim would have been more appropriate for that one.

Text Copyright John L. Welch 2023.


At 12:15 PM, Anonymous Anonymous said...

I wish I was a famous baseball player, so I could overcome all the FTF and ornamental refusals I'd surely get if I tried to use any of the Board's examples as specimens.

At 3:40 PM, Anonymous Keith Danish said...

Judge not lest you be judged.


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