The Yankees really are the Evil Empire.
The New York Yankees have successfully opposed an attempt to register “Baseballs Evil Empire” as a mark in connection with “clothing, namely, shirts, t-shirts, sweatshirts, jackets, pants, shorts and hats.” The basis for the opposition is that consumers already associate the phrase “Evil Empire” with the Yankees or, in the words of the Trademark Trial and Appeal Board, in a non-precedential opinion:
In view of the evidence submitted by opposer, we find that the term EVIL EMPIRE, when used in connection with baseball, refers to opposer, the Yankees. …
In short, the record shows that there is only one EVIL EMPIRE in baseball and it is the New York Yankees.
The TTAB’s sense of humor does not extend to the conclusion that consumers might recognize the EVIL EMPIRE mark as a parodic reference to the Yankees.
Evil Empire, indeed.
It doesn’t seem unlikely to me that the Yankees would adopt “Evil Empire” to refer to themselves — or even to market to fans who *don’t* support their team — so I can actually see consumers being confused as to whether the Yankee licensed t-shirts with “Evil Empire” on them. And like the “Coke” case established, it’s possible to police marks the public uses to refer to your good or service even if you don’t use those yourself. The real problem, I think, is with the whole notion of merchandising rights — that one company, because it provides an entertainment service that is publicly referred to as “X”, gets to stop competitors from selling t-shirts with the words “X” on them — not because consumers would be confused about whether X company made the shirts, but because they’d be confused about the licensing arrangement. That’s just the wrong reading of the function of trademarks, in my opinion, and continues to be wrong with every case that adds another citation for the idea.
And btw, thanks again for the PDF embedding add-on, it was great to be able to scan this opinion right from the post.
I agree that the decision here isn’t really out of step with current law. I think that the “Coke” case is a little different, though. “Evil Empire” isn’t something that the Yankees have adopted or are likely to adopt; the opinion says that the parties agreed that the phrase is derived from a first use by a Boston Red Sox exec – who was, I think it’s reasonable to assume, partly serious and partly joking. George Steinbrenner as Darth Vader, etc. The fact that the Yankees sometimes play Star Wars music at the stadium is evidence, I believe, that the team is in on the joke. So if I could start from scratch, I’d find a minimal likelihood of confusion here. And I think that the TTAB’s discussion of confusion is really unpersuasive. As the Board notes, the Yankees only showed up to oppose because they didn’t like the idea that the applicant could make money off of Yankees goodwill – even indirectly. When the money starts to flow, the joking stops.
I get the basis for the denial of registration. Now whether fans really would be confused, I’m not sure, but it’s plausible enough that I’ll buy it. What disturbs me more about the decision is that its section 2(d) (not section 2(a)) portion appears to consider “Evil Empire” a trademark owned by the Yankees, not merely a deceiving implication of association with the Yankees. This worries me because if the Yankees own “Evil Empire,” they will start using trademark law to control how people use that term in relation to the Yankees. That doesn’t seem right. I’d rather have the result be that “Evil Empire” cannot be a trademark for anyone in the baseball space. That would leave the term totally free for play and humorous reference, which is exactly how the term has been used till now. Otherwise the Yankees will wind up controlling shirts that say “Go Evil Empire!” Of course, this all assumes that Disney, successor in interest to Lucas, doesn’t get involved, right?
I can’t tell whether that last line is a joke, Fred. If we play out the hypothetical, then what kind of argument would/could Lucasfilm/Disney make vs. the Yankees? Even the Yankees should be stuck with the phrase “Evil Empire”; they shouldn’t be able to pursue claims based on an interest in the “Empire.” That’s important because the Star Wars films featured “the Empire,” not “the Evil Empire.” “Evil Empire” was a Ronald Reagan-ism; he applied the phrase to the Soviet Union. Of course, the Reagan Administration leveraged the phrase “Star Wars” to describe the SDI and drew Lucas’s ire, even if Lucas eventually lost that case. So I guess that it’s not unimaginable that Disney could argue that consumers associate “Evil Empire” with the Star Wars franchise, and that there is some kind of overlap between film-as-entertainment and baseball-as-entertainment. But I can’t persuade myself that this would be a reasonable route to pursue.
It’s primarily a joke. But as your response indicates, it’s just plausible enough for people to take seriously. Of course, that’s one of the problems with trademark, and IP more generally. Parties seem compelled to pursue claims that are just plausible enough to take seriously. I wouldn’t advise Disney to pursue this against the Yankees. But it wouldn’t surprise me if Disney has pursued other claims that are equally questionable.