Yankees Win! TTAB Sustains Section 2(d) Opposition to NYC NEW YORK CANNABIS & Design for Clothing
I admit I'm no Yankee fan, and maybe my judgment is clouded by my long-standing dislike of the Bronx Bombers, but I think they should have lost this one. The Board sustained the Yankees' opposition to registration of the mark shown below, for baseball caps, uniforms, and other clothing items, finding the mark confusingly similar to the Yankees' registered (for baseball caps) and concededly famous interlocking NY logo (shown further below). New York Yankees Partnership v. Brian K. Reaux, Opposition No. 91271056 (May 22, 2025) [not precedential] (Opinion by Judge Mark A. Thurmon).
In typically obnoxious fashion, the Yankees submitted more that 10,000 pages of evidence, most of it directed to the fame of its mark, although Applicant Reaux had conceded same. Instead, Reaux understandably argued that the marks are too different to be confusable and therefore the fame of the Yankees' logo doesn't matter.
The Board found that "the main point of similarity—the nested N and Y design—is the most striking element of Applicant’s mark." "In effect, Applicant has taken the entirety of Opposer’s mark, modified it slightly and added some additional elements, all of which are much less prominent in Applicant’s mark than the nested N and Y design that comprises the entirety of Opposer’s mark."
[T]he wide, block lettering style used in Opposer’s mark provides the space Applicant needed for all the smaller cannabis leaves shown within the letters N and Y. The wide, curving lettering is an important aspect of Opposer’s mark, as the nested letters N and Y refer to New York City .... *** Applicant uses the same wide lettering, the nested N and Y, and the exaggerated curvature of the vertical parts of the N. These are all key aspects of Opposer’s mark.
The Board deemed the words NEW YORK CANNABIS and the leaf design to be "descriptive of a business with some relation to cannabis, even if that relation is merely to promote cannabis in a general way. We find the elements Applicant added to the nested N and Y are descriptive matter and are unlikely to be viewed as source identifiers by consumers."
According to the Board, "the dominant element of Applicant’s mark is the nested N and Y design, which is the first and largest element in the mark."
The dominant element of Applicant’s mark is sufficiently similar to Opposer’s mark that a substantial number of consumers are likely to associate the marks. Some of those consumers may believe Opposer has expanded its business or has endorsed Applicant’s business, or has endorsed CBD goods, which are derived from the cannabis plant and have been endorsed by some Major League baseball teams. We find the marks visually similar.
Although the Board found that the marks differ in sound and meaning," the visual similarity is sufficient to increase the risk of consumer confusion."
Finally, the Board found that Reaux intended to trade on the goodwill of the Yankees' mark. "Even if Applicant subjectively believed his actions were allowable under trademark law, he created a mark that calls to mind the Yankees’ famous mark and he is selling identical goods.
It is clear that Applicant intended to use the fame of the Yankees’ mark to create a business opportunity for himself—one Applicant did nothing, other than altering the Yankees’ mark, to create. That is what it means to trade on the goodwill of another’s trademark. The thirteenth factor, therefore, weighs in favor of a finding of likelihood of confusion.
Read comments and post your comment here.
TTABlogger comment: I just don't see how a consumer would think that goods bearing Brian Reaux's mark emanate from, or are licensed or approved by, the Yankees. Are consumers that dumb? The question is, what will consumers perceive, not what Mr. Reaux intended.
The Board declined to reach the Yankees' dilution-by-blurring claim. That claim requires that the challenged mark "trigger consumers to conjure up" opposer's mark. How can a mark "conjure up" another if they are not confusingly similar?
Text Copyright John L. Welch 2025.
posted by John L. Welch @ 5/29/2025
7 comments
7 Comments:
No fan of the Yankees either, but the TTAB got this one right. It would be very troubling to have a rule where an admittedly famous mark can be slightly altered and used -- not for parody or satire -- but for commercial purposes and -- worse -- to trade off the goodwill of the famous mark. I represent clients who own famous marks in the sports and entertainment fields, a ruling against the Yankees in this case would set off a stampede of similar filings at the USPTO with alterations of the logos of every NFL, NBA, NHL, MLB, & etc. team. File a pile of ITU applications, and see which ones stick. It would be a sad day for sports and entertainment logos to be so easily co-opted to sell someone else's products and logic. In our fractured society, professional sports and blockbuster entertainers are one of the few threads left holding us together. And after that somber comment, let me finish by saying that I agree 1000% that it was obnoxious for the Yankees to submit 10,000 pages of proof for fame after the Applicant's concession. So typical. Go White Sox!
I agree with the end results, but think dilution would have been more appropriate. You would have to be pretty high to think that the New York Yankees approved goods referring to NEW YORK CANNABIS.
I think this is the right result but wrong rationale. I would have sustained the opposition on the dilution claim, not the likelihood-of-confusion claim.
I ordered something to smoke and got tickets to a Yankees game instead is not likely to ever happen!
I also agree this was the right result but wrong rationale. I think the Board should have decided this based on dilution and not based on a 2D analysis. To your point, John, no consumers are not that dumb, but it seems pretty apparent from the logo, the Applicant wanted to trade off the Yankee's goodwill, and this behavior should be discouraged. We see this often especially in the cannabis industry.
Well, in order to find dilution, you have to find that the marks are confusingly similar. If that's the case, then since the goods overlap, Section 2(d) should apply. So I think the Board went with 2(d) because it's easier to explain. Also, do you think the Yankee symbol is a "household word?"
Household "word"--no. But it is pretty ubiquitous nationally on baseball caps. No matter where you go, you will see people wearing hats with the Yankees' NY logo.
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