On February
8, 2013, the Trademark Trial & Appeal Board (“TTAB”) sustained the
opposition filed by the New York Yankees Partnership (“Yankees”) against the
registration of “BASEBALLS EVIL EMPIRE” filed by Evil Enterprises, Inc., on
likelihood of confusion grounds and on the ground that the mark falsely
suggests a connection with the Yankees baseball team. New York
Yankees Partnership v. Evil Enterprises, Inc., Opp. No. 91192764 at 25
(TTAB Feb. 8, 2013) (non-precedential).
The Yankees did not succeed on its claim that the mark would be
disparaging. Id.
Evil
Enterprises (the “Applicant”) filed its application for registration of the
mark BASEBALLS EVIL EMPIRE in connection with clothing (Class 25) on July 7,
2008, alleging a future intent to use the mark in commerce. On its website, Applicant indicated that the
goods would be directed to consumers who were looking for Yankees-related
merchandise: “If you are passionate
about the New York Yankees then you have come to the right place.” Id. at 5.
Record
evidence also indicated that the Yankees had come to be known as the “evil
empire” over the years, and even played the “ominous music from the soundtrack
of the STAR WARS movies at baseball games.”
Id. at 5, 12. Since being coined by a rival baseball club
to refer to the Yankees, the “term EVIL EMPIRE has . . . been taken up by the
media, Yankees’ fans, and detractors as a reference to the Yankees.” Id. at 5.
It was
because of this implicit adoption of the phrase by the Yankees that the portion
of its opposition alleging disparagement was denied. Id. at 25.
In
connection with the claims of likelihood of confusion under § 2(d) and false
suggestion of a connection between the applicant’s goods and the Yankees under
§ 2(a), however, the Yankees’ opposition succeeded.
Likelihood of Confusion (§ 2(d))
In its
opposition, the Yankees alleged that the applicant’s mark so resembled the mark
“EVIL EMPIRE which has come to be associated with opposer [the Yankees] as to
be likely to cause confusion.” Id. at 8. The court based its analysis on the du Pont factors, noting that not all of
them would be relevant in every case, “and only factors of significance to the
particular mark need be considered.” Id. (citing In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A.
1973).
The Yankees,
as the Opposer, bore the burden to introduce sufficient facts to allow the fact
finder to conclude that confusion, mistake or deception was likely. Id.
at 9 (citations omitted). Notably,
however, the Yankees were not required to actually use the mark in commerce in
order to establish their rights to the mark.
All that was required was that the public associate that mark
with their goods and services. Id. “[T]he public’s adoption of [the mark] to
refer to [opposer] is enough to establish trade name and service mark
use.” Id. (quoting Martahus v.
Video Duplication Servs., Inc., 3 F.3d 417, 27 U.S.P.Q.2d 1846, 1845 n.9 (Fed.
Cir. 1993)).
In support
of their position, the Yankees introduced hundreds of news articles, stories
and blog entries, as well as admissions by applicant showing that the phase “Evil
Empire” had come to be known by the public to refer to the Yankees Ball Club. Id.
at 11. Applicant even included the
following sales pitch on its web site: “Baseballs
Evil Empire takes pride in our merchandise and our great task of alerting all
baseball fans and the like to send the message out loud that the Yankees are
Baseballs Evil Empire.” Id. at 12.
The court
went on to analyze whether the mark had become famous, the level of similarity
between the goods, channels of trade and classes of consumers, as well as that
of the marks themselves as to “appearance, sound, connotation and commercial
impression” and the remaining duPont factors. Id. at 17.
Notwithstanding
the many duPont factors weighing
heavily against its position, the applicant also argued that its use of the mark
was a “spoof and parody of the New York Yankees baseball club, and thus no
likelihood of confusion can be established . .
.,” an argument that the court rejected when it held that “[p]arody . .
. is not a defense to opposition if the marks are otherwise confusingly
similar, as they are here.” Id. at 20 (citations omitted). The court found that a likelihood of
confusion had been shown.
False Association (§ 2(a))
To establish
a claim of falsely suggesting a connection between the mark and the opposer,
the opposer must prove “(1) that the applicant’s mark is the same or a close
approximation of opposer’s previously used name or identity; (2) that applicant’s
mark would be recognized as such by purchasers, in that the mark points
uniquely and unmistakably to opposer; (3) that opposer is not connected with
the goods that are sold or will be sold by applicant under its mark; and (4) that
opposer’s name or identity is of sufficient fame or reputation that when
applicant’s mark is used on its goods, a connection with opposer would be
presumed.” Id. at 20-21 (citations omitted).
Considering all of the evidence previously discussed in the opinion, the
court concluded that the Yankees demonstrated that the mark falsely suggests a connection
with the Yankees.
Summary
As mentioned
above, the court concluded that there was a likelihood of confusion, that the
mark falsely suggested a connection with the Yankees, and that the
disparagement claim could not stand. As
a result, the court sustained the opposition on two of the three grounds, and registration
was refused.
For more
information about this decision, the following links may be of interest:
John L.
Welch, “Yankees
Win! TTAB Sustains Opposition to BASEBALLS
EVIL EMPIRE on Confusion and False Association Grounds,” TTABlog, Feb. 21,
2013.
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