The New York Yankees have long been known in some circles as baseball's "Evil Empire." But while the nickname certainly began as an insult, the team recently turned the tables and claimed ownership of it – brushing back a merchandising company called Evil Enterprises. Here's what happened.

The New York Yankees (the "Yankees") were founded in 1903.  Larry Lucchino, the President of the Boston Red Sox, first dubbed the Yankees the "Evil Empire" in 2002. The Yankees use and own several marks for clothing including YANKEES UNIVERSE, THE HOUSE THAT RUTH BUILT and BRONX BOMBERS. However, they do not use the mark EVIL EMPIRE or own any applications or registrations for EVIL EMPIRE.

Evil Enterprises (Applicant) applied for a trademark for BASEBALLS EVIL EMPIRE on July 7, 2008 based on intent to use the mark in commerce. Applicant sought to use the mark for "clothing, namely, shirts, t-shirts, sweatshirts, jackets, pants, shorts and hats" in International Class 25. The Yankees opposed registration of Applicant's mark, pointing to (1) the Yankees' prior rights in the mark EVIL EMPIRE and the likelihood of confusion between that mark and Applicant's mark, (2) Applicant's mark's false suggestion of a connection with the Yankees and (3) Applicant's mark's disparagement of the Yankees.

The Trademark Trial and Appeal Board (the "TTAB") first found that the Yankees' other registrations for clothing and the strong public association between the Yankees and the mark EVIL EMPIRE gave the Yankees a direct commercial interest in the opposition proceeding and thus standing to oppose Applicant's mark. The TTAB then addressed the likelihood of confusion inquiry, finding that Applicant's admission of its awareness of this public association prior to filing established the Yankees' prior rights in the mark EVIL EMPIRE. The TTAB agreed with the Yankees that there was a likelihood of confusion, basing its decision on: (1) the fame of the mark EVIL EMPIRE; (2) the Yankees' and Applicant's similar goods, channels of trade and classes of consumers; and (3) the similar appearances, sounds, connotations and commercial impressions of EVIL EMPIRE and Applicant's mark.  The TTAB rejected Applicant's parody defense in light of the likelihood of confusion.

The TTAB also found that Applicant's mark falsely suggested a connection with the Yankees due to (1) the similarity of EVIL EMPIRE and Applicant's mark; (2) the likelihood that Applicant's mark would be recognized by consumers as pointing only to the Yankees; (3) the Yankees' lack of connection with the clothing to be sold by Applicant; and (4) consumers' likely presumption of a connection between the Yankees and Applicant's mark due to the Yankees' fame. It dismissed the Yankees' disparagement claim in part because of the Yankees' earlier admission that the team "implicitly embraced" the EVIL EMPIRE moniker by playing the STAR WARS theme music at games. This admission undermined the Yankees' ability to later label Applicant's Mark offensive or objectionable.

In sum: The ... Yankees win! The ... Yankees win! (And the TTAB decision is here.)

This article first appeared in Entertainment Law Matters, a Frankfurt Kurnit legal blog.

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