In a precedential decision, the Trademark Trial and Appeal Board (“TTAB”) found a likelihood of confusion between the applied-for marks sought by Applicant, Michael P. Chisena, and the common law rights owned by Opposers, Major League Baseball Players Association (“MLBPA”) and Aaron Judge (“Judge”). Major League Baseball Players Ass’n v. Chisena, 2023 U.S.P.Q.2D 444, 2023 TTAB LEXIS 117 (TTAB Apr. 12, 2023). Applicant sought to register the marks ALL RISE, HERE COMES THE JUDGE, and the design mark:

Opposers claimed common law rights for essentially identical marks.

As background, Judge is one of the most famous and recognizable Major League Baseball players. He plays right field for the New York Yankees, won the All-Star Home Run Derby in 2017, and started the All-Star game in 2017. Media, fans, and the Yankees consistently play on his surname, “Judge.” The same day as the 2017 All-Star Home Run Derby, Applicant contacted his trademark counsel about conducting a search related to the marks at issue. Despite that coincidence, Applicant alleged that he conceived the marks between 2012 and 2015, had no knowledge of Judge at that time, did not watch Major League Baseball, and chose the connection between the judiciary and baseball because “baseball is governed by rules and umpires similar to a courtroom proceeding is governed by laws and judges.”

The TTAB found both opposers had standing because they both had “a reasonable belief in damage that would proximately result from the registrations’ issuance” (the MLBPA as the licensee of Judge and Judge as the trademark owner). Turning to priority, the TTAB compared Opposers’ use of the marks at issue in June and early-July 2017 with Applicant’s constructive use date of July 14, 2017. The TTAB rejected several arguments advanced by Applicant that “Opposers have not pleaded or proven that they established proprietary rights in their claimed trademarks prior to his constructive use dates.”

First, the TTAB rejected a technical argument that the Electronic System for Trademark Trials and Appeals (“ESTTA”) cover sheet insufficiently described Opposers’ common law marks because the pleadings attached to the ESTTA cover sheet were sufficient. Second, “ALL RISE and HERE COMES THE JUDGE do not describe the apparel on which they appear, such as t-shirts, jerseys, and caps, and are thus inherently distinctive.” Third, “JUDGE” is not primarily merely a surname because “the relevant purchasing public clearly perceives ‘JUDGE’ in the context of HERE COMES THE JUDGE as a play on words, embracing both its judicial and surname meanings.” Fourth, it “does not matter whether [ALL RISE is] technically a nickname or not. A plaintiff may have a protectable property right in any term the public has come to associate with the plaintiff’s goods or services.” Fifth, Opposers’ common law marks were used as trademarks, despite the MLBPA defining them as “Rights” instead of “Trademarks,” because consumers clearly associated the marks with Opposers. Finally, the common law marks functioned as trademarks because “the judicial phrases and symbols used by Opposers and their licensees serve to perform the function of identifying a secondary source for the apparel on which they appear.”

Having rejected all of Applicant’s legal arguments, the TTAB determined that Opposers established common law rights in the marks at issue prior to Applicant’s constructive use date.

Finally, the TTAB determined that a likelihood of confusion existed because the marks were nearly identical, they were sold in connection with identical or overlapping goods, and t-shirts and other apparel may be purchased on impulse in overlapping trade channels.