April 8, 2013

By Brian Yost

Special to the Fort Worth Business Press

It’s official: The New York Yankees are indeed baseball’s Evil Empire … at least as far as the Trademark Trial and Appeal Board and the New York Yankees are concerned. A company named Evil Enterprises Inc. thought selling clothing under the trademark “Baseballs Evil Empire” would be a good idea. In fact, the company thought so much of this idea that it filed an application to register the mark with the U.S. Patent and Trademark Office.

The plan almost worked, as the mark initially was approved by the government examiner assigned to review the mark.

By way of background, in 2012 the Yankees payroll dipped to just below $200,000,000. However, this was still the highest payroll in baseball. The Yankees have had the highest payroll in baseball since 1998, a year the Baltimore Orioles topped the charts. Since 1996, the Yankees have appeared in the World Series on seven occasions and won the series five times.

Throwing around all that cash and having that kind of success tends to inspire jealousy and bitterness among rivals. So much so that when Boston Red Sox club president Larry Lucchino learned in 2002 that the Yankees had out-maneuvered Boston in acquiring the highly-coveted Cuban pitcher Jose Contreras, Lucchino reportedly quipped, “The evil empire extends its tentacles even into Latin America.”

The moniker stuck. Ever since, fans and the media have referred to the Yankees as the “Evil Empire.” Of course, the Yankees never referred to themselves as the Evil Empire. But they haven’t backed away from the nickname, either. After all, they are well known for playing ominous music from the soundtrack of the Star Wars movies during Yankee Stadium baseball games.

In July 2008, Evil Enterprises filed its trademark application for the mark “Baseballs Evil Empire.” The application went through the usual examination process and was approved to be published, a step that permits any party claiming it would be damaged by the registration to oppose the registration.

The Yankees opposed, claiming that the registration would cause “confusion” and “false association” and would “disparage” the team. The board found in favor of the Yankees, stating that “it is well-settled that in order to establish rights in a mark, a party need not have actually used a mark if the public nevertheless associates the mark with the goods or services of that party.” In short, the board found that the term “Evil Empire,” when used in connection with baseball, refers to the Yankees.

But on the “disparagement” issue, the board ruled against the Yankees, stating that the Yankees, “having succumbed to the lure of the dark side … will not now be heard to complain about the judgment of those who prefer the comfort of the light.”

http://fwbusinesspress.com/fwbp/article.aspx?sv=srch83651t34&aid=249

Brian Yost is a shareholder with the Decker Jones law firm in Fort Worth. His practice areas include intellectual property, domestic and foreign patent and trademark prosecution, utility patents, design patents and copyrights. He can be reached by email at byost@deckerjones.com.