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 No. 91192764 at 25 (TTAB Feb. 8, 2013) (non-precedential).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.
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.