Intellectual Property Attorney

The Evil Empire Strikes Back! The New York Yankees Embrace Evil Empire Trademark

The New York Yankees Partnership, owner of the New York Yankees baseball club, has successfully opposed registration of the trademark BASEBALLS EVIL EMPIRE by Evil Enterprises, Inc., an entity that reportedly intended to sell merchandise relating to the famed Major League Baseball club.

In 2008, Evil Enterprises filed an application to register BASEBALLS EVIL EMPIRE for “clothing, namely, shirts, t-shirts, sweatshirts, jackets, pants, shorts and hats” in Class 25 on an intent-to-use basis . The Yankees opposed registration of the trademark on three grounds: (i) priority and likelihood of confusion under 11 U.S.C. § 1052(d); (ii) false suggestion of a connection with the Yankees under 11 U.S.C. § 1052(a); and (iii) registration of BASEBALLS EVIL EMPIRE would bring the Yankees into contempt or disrepute under 11 U.S.C. § 1052(a). On February 8, in New York Yankees Partnership v. Evil Enterprises, Inc. (Oppostion No. 91192764) [non precedential], the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) sustained the Yankees’ opposition on the grounds of likelihood of confusion and false suggestion of a connection.

According to the TTAB’s opinion, Evil Enterprises and the Yankees agreed that the term EVIL EMPIRE arose in 2002 when the Boston Red Sox’s President, Larry Lucchino, speaking of the Yankees’ signing of Jose Contreras, said: “The evil empire extends its tentacles even into Latin America.” After that, the use of EVIL EMPIRE as a reference to the Yankees went viral and was used extensively by the media, as well as Yankees’ fans and enemies. The Yankees themselves “implicitly embraced” the EVIL EMPIRE trademark, “including playing ominous music from the soundtrack of STAR WARS movies at baseball games,” although the Yankees never sought to register the EVIL EMPIRE trademark.

In sustaining the Yankees’ opposition with respect to priority and likelihood of confusion, the TTAB held that the Yankees had established priority because Evil Enterprises had been aware that the Yankees had “been referred to and known as the ‘Evil Empire'” prior to the date of its application. It then applied the du Pont factors from
In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973). In relevant part, the TTAB held that the Yankees have a protectable trademark right in EVIL EMPIRE when used in connection with baseball even though it had never used the trademark. The TTAB explained that, in order to establish rights in a trademark, a “party need not have actually used a mark if the public nevertheless associates the mark with the good or services of that party.” In this case, the Yankees submitted “hundreds of news articles, stories, and blog entries, as well as admissions by [Evil Enterprises], demonstrating that the term EVIL EMPIRE is widely used as a shorthand reference or nickname for [the Yankees].” Evil Enterprises itself conceded that the Yankees had “been referred to and known as the ‘Evil Empire’ by the press, fans, media, other Major League baseball teams and/or public.” Indeed, on its website, Evil Enterprises stated: “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 NY Yankees are Baseballs Evil Empire….”

Notwithstanding the recognition of the extensive use of EVIL EMPIRE in reference to the Yankees, Evil Enterprises argued that EVIL EMPIRE was not a protectable trademark because other baseball clubs had been referred to as “evil empires”. The TTAB rejected the argument. Specifically, the TTAB wrote: “Applicant’s evidence showing a small number of stories discussing other sports teams as ‘evil empires’ does not counter the weight of [the Yankees’] evidence. Rather, applicant’s evidence shows only that these other teams aspire to be in the position of the Yankees, i.e., spending more on salaries and winning more championships.” Thus, the TTAB concluded: “the record shows that there is only one EVIL EMPIRE in baseball and it is the New York Yankees.”

Moreover, the TTAB concluded that the EVIL EMPIRE trademark had achieved a considerable level of fame, i.e., the vast majority of baseball fans recognize the EVIL EMPIRE trademark as referring to the Yankees. This finding of fame was significant because a “famous mark has extensive public recognition and renown and enjoys a broad scope of protection or exclusivity of use.” Thus, the TTAB concluded that the EVIL EMPIRE trademark is “entitled to a broad scope of protection, especially since applicant markets its goods to [the Yankees’] baseball fans.”

Applying the remainder of the relevant du Pont factors, the TTAB held that: (i) the goods identified in the application are identical to the clothing and apparel sold by the Yankees; (ii) the trademarks BASEBALLS EVIL EMPIRE and EVIL EMPIRE were similar in appearance, sound, connotation and commercial impression; and (iii) the addition of BASEBALLS was not sufficient to distinguish the trademarks. Thus, the TTAB held that “the relevant
du Pont factors weigh heavily in favor of a finding of likelihood of confusion.”

In sustaining the Yankees’ opposition with respect to false suggestion of connection, the TTAB held that: (i) BASEBALLS EVIL EMPIRE is the “same as or a close approximation of” the Yankees’ EVIL EMPIRE trademark in that the trademarks “differ only slightly”; (ii) BASEBALLS EVIL EMPIRE “would be recognized by prospective purchasers as pointing uniquely and unmistakably” to the Yankees; and (iii) the evidence of “fame and recognition” submitted by the Yankees was sufficient to show that the EVIL EMPIRE trademark “has such fame and renown that the use of BASEBALLS EVIL EMPIRE as a trademark by an unauthorized user will falsely suggest a connection with the Yankees.”

Lastly, the TTAB dismissed the Yankees’ opposition on the grounds that the use of BASEBALLS EVIL EMPIRE was disparaging. Specifically, the TTAB found “that use of the term BASEBALLS EVIL EMPIRE is not disparaging to” the Yankees. Indeed, the Yankees’ acts of “embracing the EVIL EMPIRE characterization, whether explicitly or implicitly, undermines its argument that use of BASEBALLS EVIL EMPIRE disparages the Yankees.” The TTAB concluded rather eloquently: “In other words, having succumbed to the lure of the dark side, [the Yankees] will not now be heard to complain about the judgment of those who prefer the comfort of light.”

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