Continuing In Our Discussion of this Hasty Trademark War…
The publication period began on May 26, 2009, and I’m sure that Evil Empire, Inc. waited anxiously to see if anyone opposed it. With barely hours to spare, the New York Yankees filed for an “extension of time to oppose” on June 25, 2009. Evil Empire, Inc. was already digging for home when the umpire threw up his hands and said “time out”. The time out lasted for years. The Yankees then filed five more extensions of time to oppose – the maximum allowed. On November 20, 2009, the Yankees finally took their first swing at the piñata, and filed their Opposition. The Yankees began their opposition by citing how many World Series they had appeared in and won (not mentioning the financial advantages their team has over smaller market teams), and then admit that they are known as the “Evil Empire”. The initial brief then began talking out of both sides of its mouth at the same time, claiming that allowing this trademark to issue would either “disparage” or bring the Yankees into “contempt or disrepute” because the word “evil” is bad, or trick those Yankee fans who “embrace” the term Evil Empire as “a badge of honor”. However, this type of alternative arguments is allowed. Finally, the Yankees rely upon the proverbial “danger of consumer confusion” rationale, arguing that a consumer might believe that shirts produced by Evil Empire, Inc. under the brand “Evil Empire” were actually made by or sanctioned by the New York Yankees.
The Trademark Trial and Appeal Board (TTAB) then looked the duPont factors in determining where there was truly a danger of consumer confusion sufficient to reject this trademark application, and they ruled Evil Empire, Inc. was out at home plate. The TTAB noted that the Yankees had provided literally hundreds of newspaper and magazine articles depicting the Yankees as the Evil Empire. It was also noted that the Yankees had accepted this nickname, and, indeed, had even promoted it by having Star Wars music played at Yankees’ home games, and so, unlike Star Wars, the Evil Empire (as opposed to Evil Empire, Inc.) actually won in the endread more
The Evil Empire: Yankees Finally Admit The Truth
For many years, a large number of sports fans (particularly from Boston) have referred to the New York Yankees as the Evil Empire. On July 7, 2008, a company calling itself Evil Enterprises, Inc., a New York corporation, filed for trademark protection on “Baseballs Evil Empire” (yes, they apparently forget the apostrophe). So, I’ll give them first base on just filing a trademark application; way too many businesses hide their heads in the sand like ostriches, thinking that simply ignoring the fact that they don’t have a trademark will not become a problem if they pretend the problem doesn’t exist. Their application, serial number 76691096, was filed under the “intent to use” basis, which means that they weren’t using the mark in commerce prior to their filing. This was most definitely a smart move as if they had filed “in use” the Yankees baseball team could have not only opposed their trademark but also sued them for trademark infringement. OK, Evil Empire, Inc. just stole second base.
The application received an initial Office Action in which the examining attorney stated that “The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.” This means that the USPTO will approve the application so long as the applicant, Evil Empire, Inc., fixed a couple of other problems with the application relating to citizenship of the applicant and some problems with the wording of the goods and services. Evil Empire, Inc. then fixed the problems and the application went to its “publication period”. Publication is a 30-day window during which any party who feels that it will be harmed by this particular trademark issuing can file an “Opposition” against the application. The USPTO just awarded Evil Empire, Inc. third base.
To Be Continued….read more
Is Your Business Name Trademarked? Are You Building A Brand Without Protection?
Join us at our Trademark Workshop on Thursday, April 18, 2013 from 9:30 am to 10:30 am. Eric Hanscom, Managing Attorney at ICIP Law will be the speaker for this very informative seminar. He will discuss the importance of Trademarking your brand and also guide you through an online trademark search with the USPTO. Bring your laptop so you may follow along.
Pre-Paid registration is required download our Workshop Registration Form here and return to the Carlsbad Chamber of Commerce. Chamber members $25.00, Prospective Members $50.00. Or you may register online at www.carlsbad.org. Workshop will be held at 5934 Priestly Drive, Carlsbad, CA 92008. Questions call (760) 931-9153.