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

from the bad-news dept

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.

Filed Under: confusion, evil empire, trademark, yankees

NY Yankees: It's Insulting To Call Us The Evil Empire... But It's Also Trademark Infringement

from the pick-one dept

Ah, the NY Yankees. I've mentioned in the past that I'm actually a big Yankees baseball fan (last night's loss sucked), but sometimes the team (like all of Major League Baseball) does stupid things with intellectual property law. The latest is a report that the team (and Major League Baseball) are trying to deny a trademark to a couple who is selling anti-Yankee gear (mainly to Red Sox fans) using the term "Evil Empire." The Yankees are, quite amazingly, suggesting that this infringes on their own trademarks, while at the same time claiming that "evil empire" reflects poorly on the team. This whole thing seems pretty crazy. As the Deadspin article linked above notes, "Evil Empire" is a phrase first used by Ronald Reagan and has since been used in a variety of ways. For the past few years, it's been used a few times in reference to the Yankees, starting with a statement from Red Sox President Larry Lucchino, after the Yankees beat out the Red Sox in pursuit of pitcher Jose Contreras (who never turned out to be as good as advertised anyway). But it's just a silly thing among fans. Some Yankee fans have embraced the "Evil Empire" tag, while Yankee haters like to use it to express their displeasure with the team. Either way, having anti-fans mock the Yankees with "Evil Empire" merchandise hardly seems like a bad thing (and I say that, again, as a fan). It's part of what keeps the rivalry going.

The term "evil empire" has a negative connotation because the word "evil" refers to that which is morally wrong or bad, immoral, wicked, harmful and/or injurious. The BASEBALLS EVIL EMPIRE mark will be understood to refer to the Club, and, upon information and belief, is clearly intended to do so, and thus may disparage Opposer[The Yankees], or bring Opposer into contempt or disrepute among a significant segment of the consuming public.

Of course, at the same time, even as they say that it's got a negative connotation, they claim they're also worried that people will think it's legitimate Yankee merchandise. I really don't see how that's possible though.

the Yankees hold that the phrase is so connected with the Yankees that people "are likely to believe that Applicant's goods, which are identical and/or closely related to the goods offered and services rendered in connection with the Club's marks, have their origin with Opposer and/or that such goods are approved, endorsed or sponsored by Opposer"--that the average fan, seeing shirts with the words "Evil Empire" and an altered logo, would assume the Yankees were selling the shirts.

So... either "Evil Empire" hurts the reputation of the team, or it's so closely connected to the team that it's effectively a common law trademark?

Of course, what this really comes down to is pure greed. It was really just a few decades ago that fans were able to make their own shirts supporting (or denigrating) teams, and it was considered perfectly reasonable. But, as we've discussed, that all changed in the 80s, when sports teams suddenly decided that they wanted you to pay to cheer (or boo) any particular team.

In this case, the folks selling the Evil Empire gear are going to try to defend their efforts claiming it's protected use as a "parody." I really have no idea how well that will hold up at the Trademark Office (or, eventually, in court), but just the fact that this is even in dispute seems pretty silly.

Filed Under: baseball, evil empire, ny yankees, trademark
Companies: major league baseball, ny yankees