Oftentimes, those of us who dwell in the world of trademark law are perplexed by public understanding of our field, and, more specifically, consumer press reporting about trademarks. In fact, I’d have little to talk about here were it not for that.
For the last week or so, I have, however, been ruminating about how trademark specialists approached the question of the New York Yankees’ rights to block someone else from using the term BASEBALL’S EVIL EMPIRE. You, fair reader, are doubtless saying: “Sir, why not develop a new hobby, or find some other way to occupy your time?” But yet, the decision raises an interesting dynamic about whether “crowd-sourced” source identifiers can become protectible marks.
To review things: in 2008, an outfit filed an application with the US Patent and Trademark Office to register the mark BASEBALL’S EVIL EMPIRE in Class 25 for “clothing, namely, shirts, t-shirts, sweatshirts, jackets, pants, shorts and hats”. It’s not a new tact: clever (or not so) marketers latch onto something in the consumer consciousness and want to register a phrase or a word and leverage off whatever traction the notion has in the collective consciousness. Many times, the traction is lost before any gain is realized ( see e.g. IT’S TRIBE TIME and ROCKTOBER, for short-lived excursions by the Cleveland Indians and the Colorado Rockies, respectively, into post-season baseball).
This time, partly because the Yankees are, well, evil, the fight was on, and the Yankees opposed the issuance of a registration for the mark in (Opposition No. 91192764). The Trademark Trial and Appeals Board in a non-precedential decision, upheld the opposition on February 8, 2013. The curious thing here is that the Yankees do not use the mark as a source identifier, which is the usual purpose of trademark protection. The TTAB wrote:
The Yankees have
“implicitly embraced” the nickname EVIL EMPIRE, including
playing ominous music from the soundtrack of the STAR WARS
movies at baseball games.[The Yankee club], however, does not own
an application or registration for the term EVIL EMPIRE.
Nor has opposer used the mark itself in connection with any
goods or services.
So that’s what makes this one so interesting. According to this reasoning, I cannot adopt and register a mark which someone else has “implicitly embraced”. And, the “embrace” may be a subtle and delicate as playing a John Williams musical piece to a ballpark full of people? Is something amiss?
Of course, the non-precedential decision is just one panel’s opinion. And, like any Red Sox fan, I am happy to see headlines like “”NY Yankees admit their evilness to secure ‘Evil Empire’ trademark” and “Even judges say Yankees are ‘Evil Empire”. But, I am concerned about the bar that has been set for someone like the Yankees to block the trademark applicant. In fact, rather than being the object or ridicule, at its heart, the TTAB panel’s decision gives special weight to the fact that it’s the Yankees. Perhaps it is the applicant’s fault. Their promotion of t-shirts containing the phrase BASEBALL’S EVIL EMPIRE made no secret that they were referring to the Yankees, even directing prospective customers for legitimate Yankees gear to the Yankees’ website. It seems like the TTAB panel could not get past that, first finding the Yankees had standing to assert the opposition , on 2 bases [so to speak]: 1) The Yankees showed that their house registrations are valid and subsisting. Further, opposer has demonstrated that applicant “was aware that the NEW YORK YANKEES baseball team has been referred to and known as the ‘Evil Empire’ by the press, fans, media and/or public prior to filing [its]Application Serial No. 76/691,096…”
The TTAB then goes on to say that the Yankees have priority over the applied-for mark (a key requirement in trademark jurisprudence) because the applicant “knew” that “that the NEW YORK YANKEES baseball team has been referred to and known as the ‘Evil Empire’” prior to applicant’s filing date of July 7, 2008.
Whoa. The Yankees had (and have) no trademark usage of the term and their priority was established by others referring to them as the EVIL EMPIRE.
Which leads us to “the public use doctrine”, which allows a trademark owner to claims rights in uses or modifications of its trademark by the public. It’s a peculiar doctrine. which confers trademark rights based upon others’ use of the mark. “The Public Use doctrine . . states that abbreviations or nicknames used only by the public can give rise to protectable trademark rights to the owner of a mark which the public has modified.”) George & Co. LLC v. Imagination Entertainment Ltd., 575 F.3d 383, 403, 91 USPQ2d 1786, 1798
(4th Cir. 2009). However, the cases cited by the TTAB panel all properly apply the doctrine to the public’s adoption of shorthand or abbreviations for a trademark owner’s mark. The public use doctrine, up until this point, has generally been applied to those limited situations.
One could argue that prominence, the so-called “fame” of the mark has a lot to do with this dynamic as well. The TTAB panel certainly threw that into the mix.
Effectively, the TTAB has said (but not as precedent) that a crowd-sourced appellation can create trademark rights, when 1) it is not a derivation or abbreviation of an existing mark and 2) where the mark “”owner” has implicitly adopted it. That may be the right decision, and it may be fueled by the notoriety of the New York Yankees, but it is enough to give trademark practitioners pause. This is especially so if asked to give an opinion on registrability. Do now crowd-sourced common law usages have to be taken into account?