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New York Yankees Scores Evil Empire Trademark Win Based on Public Use

On July 7, 2008, Evil Enterprises, Inc. filed an intent-to-use application with the United States Patent and Trademark Office for the trademark BASEBALLS EVIL EMPIRE covering a variety of clothing items. The New York Yankees Partnership successfully opposed the registration of this mark with the Trademark Trial and Appeal Board (TTAB) claiming that, before the filing date of the application, the term “Evil Empire” came to identify the Yankees and, accordingly, the team’s merchandise. This was true despite the fact that the Yankees never actually adopted the term to describe the team, the organization or its products. Nevertheless, the club was able to prevent Evil Enterprises, Inc. from using the term “Evil Empire” through trademark law’s “public use doctrine.”

The public use doctrine provides that the public’s use of a term to describe a company or its products can confer upon the company trademark rights in that term as if the company had adopted the term itself. In its Feb. 8, 2013 decision, the TTAB explained that “[i]t is well-settled that in order to establish rights in a mark, a party need not have actually used a mark if the public nevertheless associates the mark with the goods or services of that party.” This public use doctrine has been employed to give Coca-Cola Co. rights in the mark COKE, American Express rights in the mark AMEX, and Volkswagen rights in the term BUG even though none of these companies actually used those terms at the time.

The baseball club’s argument in this proceeding was that, at least in connection with baseball, the public has used and come to associate the term “Evil Empire” with the Yankees. Therefore, Evil Enterprises’ use of its mark in connection with clothing was likely to cause consumers to confuse its products as deriving from, being endorsed by, or otherwise being associated with the Yankees organization. The TTAB agreed.

In 2002, the president of the Boston Red Sox referred to the Yankees as the “Evil Empire” after being outbid by the Yanks to acquire pitcher, Jose Contreras. Since that time, the media and baseball fans of all persuasions have adopted the term to refer to the New York club. In fact, Evil Enterprises, Inc. cemented the connection by advertising on its website that its products are for passionate Yankees fans. In light of this evidence, the TTAB concluded that consumers were likely to confuse Evil Enterprises, Inc.’s use of BASEBALLS EVIL EMPIRE on clothing items as coming from or being sponsored by the Yankees.

The Yankees also claimed that Evil Enterprises’ use falsely suggested a connection with the Yankees and would disparage the club. The TTAB agreed that BASEBALLS EVIL EMPIRE falsely suggests a connection with the Yankees, but did not find the term disparaging of the team. The Yankees admitted that some of its fans have adopted the term as a “badge of honor” and that the team has “implicitly embraced” the designation by playing the theme music from the Star Wars films at its baseball games, all of which undercut the Yankees’ disparagement claim. Nevertheless, Evil Enterprises’ application will be denied registration due to a likelihood of confusion and false suggestion of a connection with the storied franchise.

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