Robert Williams, RTT May 14, 2013

Robert Williams, Rogers Townsend & Thomas
Columbia, SC
May 14, 2013

The New York Yankees have been known as “Baseball’s Evil Empire” forseveral years now.  Looking to capitalize on that association, a company called Evil Enterprises applied in 2008 for a trademark on that phraseto be used on clothing, including hats and t-shirts.  However, theYankees proved that only they had the right to claim the name,“Baseball’s Evil Empire.”

Evil Enterprises’ application was approved by the trademark Office andwas published according to standard trademark procedure.  Publicationallows parties who believe they will be legally injured by theregistration of the trademark to oppose the registration.  An opposition is done by filing, within a certain time limit from the date ofpublication, a notice of opposition and other legal papers seeking topersuade the Office not to issue the trademark.

The Yankees learned of the trademark application and filed an opposition to the registration in 2009.  In February of this year, the trademarkOffice’s administrative judges determined that “there is only one EVILEMPIRE in baseball and it is the New York Yankees.”  As a result, thetrademark was denied because of a likelihood of confusion with theYankees.  This is true even though the Yankees never used the phrase“Baseball’s Evil Empire” in their own marketing or licensed goods,because the public associated that term strongly with the Yankees.

The Yankees also argued that “Baseball’s Evil Empire” disparaged theteam.  Although they won anyway on likelihood of confusion, the Yankeeswere not able to claim that the term was disparaging.  The Yankees could not claim disparagement because they implicitly embraced the nick name, or as the judges put it, “having succumbed to the lure of the darkside, opposer will not now be heard to complain about the judgment ofthose who prefer the comfort of the light.”

While I have no doubt that the Yankees are in fact Baseball’s EvilEmpire, they may have had a harder time proving the exclusive legalright to that name if they had waited.  If the opposition period hadexpired, the trademark would have been registered and the Yankees wouldhave had to resort to a cancellation procedure.  Further, if enough time after the registration had passed, the mark could have become“incontestable” and limited the grounds on which it could be cancelled.

The TTAB decision can be found here.

Robert Williams‘ practice encompasses business litigation and a fullrange of intellectual property services. Prior to joining RogersTownsend, Robert worked for the United States Patent and TrademarkOffice.