Trademarks and The Evil Empire

Baseball season brings hope and optimism. Sometimes, it intersects with trademark law. At that corner this time of year, you may run across the New York Yankees. An administrative decision raises an interesting question about whether “crowd-sourced” source identifiers can become protectable marks.

In 2008, an outfit filed an application with the US Patent and Trademark Office to register the mark BASEBALL’S EVIL EMPIRE in Class 25 for “clothing, namely, shirts, t-shirts, sweatshirts, jackets, pants, shorts and hats”. It’s not a new tack: marketers latch onto something in the consumer consciousness and want to register a phrase or a word and leverage off whatever traction the notion has in the collective consciousness. Many times, the traction is lost before any gain is realized (see e.g. IT’S TRIBE TIME and ROCKTOBER, for short-lived excursions by the Cleveland Indians and the Colorado Rockies, respectively, into post-season baseball).

This time, the fight was on, and the Yankees opposed the issuance of a registration for the mark in (Opposition No. 91192764).  The Trademark Trial and Appeals Board, in a non-precedential decision, upheld the opposition on February 8, 2013. The curious thing here is that the Yankees did not call themselves the Evil Empire, nor did they use the mark as a source identifier, which is the usual purpose of trademark protection. The TTAB wrote:

The Yankees have
“implicitly embraced” the nickname EVIL EMPIRE, including
playing ominous music from the soundtrack of the STAR WARS
movies at baseball games.[The Yankee club], however, does not own
an application or registration for the term EVIL EMPIRE.
Nor has opposer used the mark itself in connection with any
goods or services.

According to this reasoning, one cannot adopt and register a mark which someone else has “implicitly embraced”.  And, the “embrace” may be a subtle and delicate as playing a John Williams musical piece to a ballpark full of people.

Of course, the non-precedential decision is just one panel’s opinion. Any Red Sox fan, revels in headlines like “”NY Yankees admit their evilness to secure ‘Evil Empire’ trademark” and “Even judges say Yankees are ‘Evil Empire”. But, there is concern about the bar that has been set for an entity like the Yankees to block a trademark applicant. In fact, rather than being the object or ridicule, at its heart, the TTAB panel’s decision gives special weight to the fact that it’s the Yankees. Perhaps it is the applicant’s fault. Their promotion of t-shirts containing the phrase BASEBALL’S EVIL EMPIRE made no secret that they were referring to the Yankees, even directing prospective customers for legitimate Yankees gear to the Yankees’ website. The TTAB panel could not get past that, first finding the Yankees had standing to assert the opposition, on 2 bases [so to speak]:  1) The Yankees showed that their house registrations are valid and subsisting. Further, opposer has demonstrated that applicant “was aware that the NEW YORK YANKEES baseball team has been referred to and known as the ‘Evil Empire’ by the press, fans, media and/or public prior to filing [its]Application Serial No. 76/691,096…”

The TTAB then goes on to say that the Yankees have priority over the applied-for mark (a key requirement in trademark jurisprudence) because the applicant “knew” that “that the NEW YORK YANKEES baseball team has been referred to and known as the ‘Evil Empire’” prior to applicant’s filing date of July 7, 2008.

In short, the Yankees had (and have) no trademark usage of the term and their priority was established by others referring to them as the EVIL EMPIRE.

This leads us to “the public use doctrine”, which allows a trademark owner to claim rights in uses or modifications of its trademark by the public. It’s a peculiar doctrine. which confers trademark rights based upon others’ use of the mark. “The Public Use doctrine . . states that abbreviations or nicknames used only by the public can give rise to protectable trademark rights to the owner of a mark which the public has modified.”) George & Co. LLC v. Imagination Entertainment Ltd., 575 F.3d 383, 403, 91 USPQ2d 1786, 1798(4th Cir. 2009). However, the cases cited by the TTAB panel all properly apply the doctrine to the public’s adoption of shorthand or abbreviations for a trademark owner’s mark. The public use doctrine, up until this point, has generally been applied to those limited situations.

One could argue that prominence, the so-called “fame” of the mark has a lot to do with this dynamic as well. The TTAB panel certainly threw that into the mix. Effectively, the TTAB has said (but not as precedent) that a crowd-sourced appellation can create trademark rights, even when 1) it is not a derivation or abbreviation of an existing mark but 2) where the mark “”owner” has implicitly adopted it.

For more information about this or any copyright or trademark issues, please contact Fred Frawley (afrawley@eatonpeabody.com)

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