The Trademark Trial and Appeal Board (the “Board”) has answered the question of who is the true Evil Empire of baseball: “There is only one Evil Empire in baseball and it is the New York Yankees.” In addition to validating the feelings of Boston Red Sox fans, who have believed this point to have been true since Babe Ruth’s contract was sold to the Yankees in 1919, the Board’s administrative action points out that trademarks can originate from all over. [In full disclosure, I’m a long-time Red Sox season ticketholder.]
What led the Board to ponder who really is the Evil Empire? A company named Evil Enterprises Inc. wanted to register the trademark “Baseballs Evil Empire” [there’s no apostrophe in the word “baseballs” in the mark] for apparel that bore the Yankees logo depicted with a devil and pitchfork. Evil Enterprises claimed that its mark was a “spoof and parody.”
The New York Yankees Partnership opposed the application to register the mark because the Yankees have “implicitly embraced” the nickname. Note that the Yankees have not registered the trademark for itself.
The purpose of trademarks is to identify the source of goods and services – the entity that controls their quality. It doesn’t matter who first came up with the idea of the trademark—it’s who is using the trademark that owns it. So, the fact that Boston Red Sox President Larry Lucchino was the first to call the Yankees the “evil empire” didn’t give him ownership rights in the trademark. He seemingly was offering a tip of the cap to the Yankees’ awesome financial capabilities in signing talent.
The phrase came to be closely associated with the Yankees. Even though the Yankees didn’t originate the phrase to identify the source of its goods or services, as the Board put it, “Simply put, consumers, upon seeing applicant’s mark… on clothing would be likely to assume that these goods are connected with the Yankees baseball club when there is no such connection.”
A principal test of trademark infringement is whether there is a likelihood of confusion as to the source of goods and services. Here, the Board said that the test was met.
The Board was asked by Evil Enterprises to find that the mark was disparaging, and thus unregistrable. But there was evidence that the Yankees had taken on the association with the Evil Empire as a “badge of honor. ”The Board wrote, “In other words, having succumbed to the lure of the dark side, opposer [the Yankees] will not now be heard to complain about the judgment of those who prefer the comfort of the light.”
Other notable marks have bubbled up from the public, such as Coke for Coca-Cola and Mickey D’s for McDonald’s. Those marks came to be associated with the source of those well-known goods and services — and became trademarks.
So it’s not where a trademark comes from that counts. It’s where the trademark goes and who and what it identifies — even if it’s the Evil Empire of baseball.
In February 2015, our colleague and friend, partner Mark Fischer, passed away. We have made his blog posts available in honor of both his nuanced and wide-ranging knowledge of intellectual property, new media and entertainment law and of his entertaining style. Please read our tribute to Mark in the firm’s Alumni Spotlight publication and his obituary in the Boston Globe.