Ridiculous: Trademark Board Lets Yankees Control 'Evil Empire' Despite It Being An Insult Used By Another Team

from the bad-news dept

Wed, Feb 27th 2013 3:41pm — Mike Masnick

Two years ago, we wrote about a ridiculous situation in which the NY Yankees (disclosure: I'm a lifelong Yankees fan) were opposing a trademark application by a small company who sought to trademark "Baseball's Evil Empire" for the sake of selling merchandise with that brand on it.

As we noted at the time, it wasn't that long ago that it was considered perfectly legal for anyone to make t-shirts and other merchandise bearing the names of your favorite sports teams. But then the trademark lawyers got involved and, with sports leagues seeing the potential for lots of money, they shut that down. This seems to be another case of that sort of thing, but with a twist. In this case, the NY Yankees, who were opposing the trademark, have never used the term "evil empire" to reference the Yankees. Instead, the team was called that a decade ago by an executive of the rival Red Sox. In fact, in its own opposition, the Yankees even made the point that the term had a "negative connotation" and they didn't like it -- so it seems extra bizarre to then take "ownership" of the term via trademark.

But, in this case, the Yankees still won. The Trademark Trial and Appeal Board ruled that even though the team has never used the name, and even though it's a pretty generic and overused term, there is a likelihood of confusion and that people now associate the term with the Yankees. While I could see rejecting the term as not deserving any trademark at all, the idea that this is likely to cause confusion seems like a stretch. The team has shown no inclination in embracing the term (and its own filing showed that it felt the phrase was negative). The TTAB and the Yankees seemed to put a lot of weight in the fact that the Yankees sometimes use Star Wars music to suggest they were directly embracing the term, but that seems extremely weak, at best.

There's also a good conversation at Mike Madison's blog post on the story, in which someone notes that it would be fine if the TTAB made it clear that no one should have the trademark, but in this case, the court seemed to act as if the Yankees have the trademark, despite having nothing to do with the phrase. It repeatedly refers to the phrase as if it were the Yankees' own mark.

Meanwhile, it appears that the company that originally filed for the trademark, Evil Empire Inc., isn't giving up either, claiming it will continue making and providing Evil Empire gear, saying that the team "has never shown any indication that it plans to sue for trademark infringement over the use of the name on apparel." In other words, it's betting that despite blocking its own trademark application, the Yankees won't now go on to sue over Evil Empire's continued usage. That seems like a pretty big risk.

That said, the whole situation highlights (yet again) the nuttiness that is the end result of an "ownership society." Evil empire is a simple phrase that references Star Wars. The idea that it alone should be controlled by the New York Yankees seems preposterous.

Evil Empire (PDF)Evil Empire (Text)

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Filed Under: confusion, evil empire, trademark, yankees

28 Comments

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Anonymous Coward, 27 Feb 2013 @ 3:51pm

Where was Mickey Mouse during all this? Didn't he just buy the rights to Star Wars and the Evil Empire?
No! Disney has always BEEN the Evil Empire.
Or isn't that Microsoft who owns that moniker? Then that would make Google the rebel's who are turning into the next Evil Empire?
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Minimum Waged Shill, 27 Feb 2013 @ 3:52pm

"disclosure: I'm a lifelong Yankees fan"

I see, so now you're not only a shill for Google, you're a shill for the Yankees.
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silverscarcat (profile), 27 Feb 2013 @ 3:53pm

Hmm...
If Star Wars happened a long time ago in a galaxy far, far away... But the movies came out in the 1970s and the Yankees have existed for the entirety of the 20th century...

Hmm...

Who's first in this case?
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TimothyAWiseman, 27 Feb 2013 @ 4:02pm

Star Wars Reference?
I don't follow baseball, but its far from clear to me that "Evil Empire" refers to Star Wars. Reagan famously used it as a reference to the Soviet Union. Various detractors have used it to refer to both America and Britain at different times. Rage against the machine has a band by that nameIts conceivable that it started in star wars, but an Evil Empire (sometimes even by that exact name) is a rampant trope in Sci-Fi and fantasy.
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cpt kangarooski, 27 Feb 2013 @ 4:08pm

No, it's plausible
Trademarks are basically about consumer protection. It doesn't matter who coins a mark or what it initially refers to. What matters, fundamentally, is that the expectations held by the public in reference to the mark are met.

Considering that EVIL EMPIRE is commonly (though not exclusively) used to refer to the fucking Yankees, and especially given the designs shown here, it is possible that people who want to buy sports apparel of a level of quality associated with those bastards might get some of this, perhaps thinking that it is sort of self-deprecating humor.

Parody and satire should not be off limits in the trademark sphere, but it is tricky, certainly, to reconcile them with ensuring that marked goods and services are of consistent quality levels, such that the presence of the mark can be relied upon by customers as a reliable indicator of that quality. (E.g all COCA-COLA CLASSIC tastes the same, but not all soda does)
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Anonymous Coward, 27 Feb 2013 @ 4:13pm

Re: Hmm...
Now don't get that Abbot & Costello thing started.
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Nigel (profile), 27 Feb 2013 @ 4:22pm

Re: No, it's plausible
Well stated sir...

Also, not a fan ehh? lol

Nigel
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Vidiot (profile), 27 Feb 2013 @ 4:29pm

That warning box
I've always wondered about that "THIS IS NOT A PRECEDENT" box... seems like it's just wishful thinking. If, as a point of fact, a certain ruling was made, couldn't that be cited in a later argument, irrespective of the disclaimer?
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Mason Wheeler (profile), 27 Feb 2013 @ 4:57pm

The real problem here
In other words, it's betting that despite blocking its own trademark application, the Yankees won't now go on to sue over Evil Empire's continued usage. That seems like a pretty big risk.

And that is the real problem here, that people should be addressing but aren't. The ultimate chilling effect: "do you wanna get sued?"

When being involved in a lawsuit is so expensive as to be debilitating even when you are clearly in the right, something is clearly, fundamentally wrong with the entire system. No one should ever fear a lawsuit unless they actually think they're likely to lose. On the contrary, they should feel happy to have their chance to have their day in court, and prove that they have done nothing wrong. That's the way it used to be, in fact. But the way things have changed since then, preventing innocent people from defending themselves--or from even doing things in the first place that they would certainly have been vindicated for doing--have violated more people's rights than bad rulings ever have.
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Anonymous Coward, 27 Feb 2013 @ 5:02pm

Re: Hmm...
Or, who's on first
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AB, 27 Feb 2013 @ 5:12pm

Good thing we have copyright laws or there wouldn't be any sports, eh?
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James Plotkin (profile), 27 Feb 2013 @ 5:43pm

Re: Star Wars Reference?
Also the name of a Rage Against The Machine album :)
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out_of_the_blue, 27 Feb 2013 @ 6:12pm

Mike Masnick, supporter of legislated monopoly:
"NY Yankees (disclosure: I'm a lifelong Yankees fan)"

First, phooey on the topic. It's Mike yet again examining a grain of sand on the beach while missing the entire ocean.

Major League Baseball is a monopoly that exists only because of specific legislation to exempt it from anti-trust and labor laws. Some sharp operators got together early last century and bribed politicians for it. Been a FLOOD of money ever since, and more with television. It's now a sacred entitlement. That's how The Rich actually get income in "capitalism": from monopoly. Could be on rutabagas, but so long as protected, it's endless income.

I consider it HIGHLY significant that Mike at best picks and chooses which monopolies he wishes to exist. He claims to be against Big Media cartels exercising monopoly control, but he has no problem with Microsoft or Google. And here he tacitly accepts the MLB monopoly and even supports it -- besides the silliness of caring about which bunch of millionaire brutes win a sports contest.

You kids who just accept the world you were born into are likely unable to see that MLB is a monopoly or how that could be bad, but it's blatantly inconsistent with free markets. The mere existence of MLB should make you conclude that there are no free markets, only ones where those who got in early locked them up one way or another.

And if you don't oppose MLB, why oppose Big Media? They're just doing same as MLB in controlling the players, the game field, the referees, and getting gov't funding, but actually is a freer market because don't have such strong legislation. You CAN record a tune and compete directly with Big Media, but just try getting into MLB, even if a billionaire. (Oh, you're "free" to build a team outside of MLB? Ha. You'll be shut out of TV besides laughed at.)

So, Economist Mike: Why is MLB monopoly allowed to exist in a "free" country, and why after you say you don't want gov't creating monopolies, do you support it?
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Nigel (profile), 27 Feb 2013 @ 6:27pm

"I consider it HIGHLY significant that......"

It must be lonely at the top of MT. Bullshit.

Nigel
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Internet Zen Master (profile), 27 Feb 2013 @ 6:27pm

Re: No, it's plausible
Considering that EVIL EMPIRE is commonly (though not exclusively) used to refer to the fucking Yankees, and especially given the designs shown here, it is possible that people who want to buy sports apparel of a level of quality associated with those bastards might get some of this, perhaps thinking that it is sort of self-deprecating humor.

Uh, what? If referring to the Yankees as the Evil Empire is a common occurrence then it must be an East Coast thing, because as a West Coaster this is the first time I've ever heard that.

(Disclaimer: I'm a life-long Seattle Mariners fan, so my opinion of the Yankees is rather low. don't really mind the players [a lot of them are actually former Mariners], except for that lyin' sonuvabitch A-roid.)

Also, for Star Wars, it was usually referred to as "the Empire" (formally "the Galactic Empire"). If memory serves, there was no evil in the name.

But yeah, Chubby Checker's lawsuit against HP for a defunct app makes more sense than the TTAB's decision.

What is the Trademark Trials & Appeals Board smoking, and where can I get some?

How long will it take for the Yankees to accuse Evil Empire, Inc. of trademark violation?

The Zen Master says, "We'll see."
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Anonymous Coward, 27 Feb 2013 @ 6:49pm

Checking the Newspaper archives
Evil Empires have been around a while, for example:

"The British people will not again expend their troops and their treasure in protecting that Evil Empire from the natural consequences of its continuous misgovernment." (6 Dec 1907)

Commenting on, apparently, Steinbrenner.
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Anonymous Coward, 27 Feb 2013 @ 7:08pm

Cue the trite verbiage...
The force is strong with this one...
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cpt kangarooski, 27 Feb 2013 @ 7:22pm

Re: Mike Masnick, supporter of legislated monopoly:
Oh, I agree, we totally ought to break up baseball. My dream baseball league would be like only having the minors, so that every decently sized town has a team and a field and, with some skill and luck, could still win the series. It would likely stop team owners threatening cities with moving the team unless taxpayers fork over for new stadiums, too. Sports should be about athleticism, fun, and a love of the game. I can stand having professional players, but it shouldn't only be about money.

(And if this sounds appealing to you, ootb, why don't you support breaking up the big publishing industries and not glorifying millionaire artists or seeking to have hundred million dollar movies made; smallness and authenticity could be a boon to the arts as well)
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Ninja (profile), 28 Feb 2013 @ 3:38am

Mike quick, I had an idea! Make T-shirts with "Evil Empire" and "Techdirt" logo right below it. The trolls will flock to the insider shop!!!
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Marcel de Jong (profile), 28 Feb 2013 @ 4:30am

Re: Re: Mike Masnick, supporter of legislated monopoly:
Or how about having a World Series that actually included teams from other countries?

That said, go Tigers!
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Jeff (profile), 28 Feb 2013 @ 7:09am

Re: Re: Re: Mike Masnick, supporter of legislated monopoly:
Well... they do include the Blue Jays...
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nospacesorspecialcharacters (profile), 28 Feb 2013 @ 7:25am

That said, the whole situation highlights (yet again) the nuttiness that is the end result of an "ownership society." Evil empire is a simple phrase that references Star Wars. The idea that it alone should be controlled by the New York Yankees seems preposterous.

Do not underestimate the dark side of the USPTO.
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John Fenderson (profile), 28 Feb 2013 @ 9:22am

Re: Star Wars Reference?
Reagan famously used it as a reference to the Soviet Union.

And he was making a Star Wars reference when he did so.
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John Fenderson (profile), 28 Feb 2013 @ 9:24am

Re: Re: No, it's plausible
If referring to the Yankees as the Evil Empire is a common occurrence then it must be an East Coast thing, because as a West Coaster this is the first time I've ever heard that.

I'd never heard it, either. But though it's apparently a regionalism, that doesn't impact the potential for consumer confusion. It just impacts which consumers might be confused.
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Anonymous Coward, 1 Mar 2013 @ 1:05am

Re: Re: Star Wars Reference?
this is exactly what i was going to ask
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Marcel de Jong (profile), 1 Mar 2013 @ 8:13am

Re: Re: Re: Re: Mike Masnick, supporter of legislated monopoly:
Yeah, but you don't include the team that holds the title "World Champions" (that would be the Dutch, btw), nor many of the other nations that play baseball.

1 team from canadia
gazillion teams from the USA.
Hardly 'world', is it?
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Anonymous Coward, 1 Mar 2013 @ 2:19pm

Re: Re: No, it's plausible
West Coaster here. Are you not a baseball fan? This is definitely not just an East Coast thing.
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Anonymous Coward, 1 Mar 2013 @ 2:20pm

Re: That warning box
It could be cited, but the TTAB and examiners have no obligation to follow it.
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