In a ruling earlier this month, the Trademark Trial and Appeal Board officially recognized the New York Yankees as the exclusive “EVIL EMPIRE” of baseball. In an entertaining decision, the Board sustained an opposition lodged by the baseball club against a trademark application for “BASEBALLS EVIL EMPIRE” (no possessive) for various clothing items filed in the name of Evil Enterprises, Inc. See TTAB Opinion (Feb. 8, 2013). 
The phrase “EVIL EMPIRE” became part of our popular lexicon back in the 1970s and early 1980s in connection with the STAR WARS trilogy and was famously used by Ronald Reagan in a 1983 speech before the British House of Commons to refer to the Soviet Union. In 2002, Red Sox CEO Larry Lucchino bestowed the title on the Yankees after the club signed a highly acclaimed Cuban pitcher, commenting “the evil empire extends its tentacles even into Latin America.” While not exactly intended to be complimentary, the phrase stuck among sports journalists, fans and detractors. As a result of this public association, the Yankees organization, which has never itself used the EVIL EMPIRE moniker, was able to establish rights in the mark in connection with products and services associated with baseball. Specifically, the organization submitted numerous third party uses of the name referring to the Yankees in news stories, internet blogs, message boards and Wikipedia references. Further, the Yankees identified similar associations in Applicant Evil Enterprises’discovery responses and web materials. In light of such evidence, the Board found that Evil Enterprise’s registration and use of BASEBALLS EVIL EMPIRE mark would create both a likelihood of confusion and a false association of connection with the New York Yankees. The USPTO regulations clearly recognize an entity/individual’s right to nicknames developed through the media, but one wonders whether we would have seen the same result if Evil Enterprises had either filed an application for “EVIL EMPIRE” (without the BASEBALL modifier) (a 2003 application filed for EVIL EMPIRE (App. No. 78/285,579) by a third party for hats, shirt and jackets went unopposed) and/or had the foresight to file its application back in 2002. While the USPTO has recognized nickname association in circumstances involving only a short time period of use, those instances appear most common where the nickname is, on its face, uniquely and unmistakably associated with the referenced individual (e.g. LINSANITY). The USPTO may likely require more significant evidence where the association requires a mental leap. Finally, it is interesting that the Board did not find the BASEBALLS EVIL EMPIRE mark disparaging, noting the offensiveness of the term “evil” is not obvious in matters of public opinion. The New York Yankee’s own evidence showed that a number of fans adopted the moniker as a “badge of honor” and that the Yankees “implicitly embraced” the designation by playing John William’s ominous “The Imperial March” (a/k/a “Darth Vader’s Theme”) during home games. In the Board’s words “having succumbed to the lure of the dark side” the New York Yankees “will not now be heard to complain about the judgment of those who prefer the comfort of the light.” See TTAB Opinion. Sources: New York Yankees Partnership v. Evil Enterprises, Inc., Opposition No. 91192764. (February 8, 2013).
This article was prepared by Tara Vold (tvold@fulbright.com / 202 662 4657) of Fulbright’s Intellectual Property and Technology Practice.
