In this digital age, branding is important because your business’ image can be seen anywhere and everywhere.  But what if a business has a famous brand and was also known by a famous nickname?  Is that nickname owned by the business?  Can another business trademark the nickname? 

Here is the story of the Yankees and the “Evil Empire”.  I’m not a baseball fan so I’ve never heard of the Yankees being referred to as the Evil Empire.  I think of Star Wars and Darth Vader’s ominous entry music.  Apparently, the Yankees and a company called Evil Empire, Inc. think there’s a commercial opportunity in the mark “Baseballs Evil Empire”.   When Evil Empire, Inc. filed an intent-to-use application, the Yankees opposed the application based on their claim that they own the proprietary right to the mark and the Evil Empire Inc.’s registration would create a likelihood of confusion because people who would see this name on a shirt would likely think the Yankees are selling it.  And even though the Yankees haven’t used the mark, the public’s adoption of the mark is enough to associate the mark with the brand, a.k.a. the Public Use Doctrine.

In this February decision, the Trademark Trial and Appeal Board (TTAB) recognized the moniker given to the Yankees by the Boston Red Sox as protectable by the Yankees, even though the Yankees never used it in public.  The TTAB is part of the USPTO (link) and decides cases involving trademark applications and oppositions.  It based its decision on the Public Use Doctrine and found that a business may obtain rights if the term is strongly associated with the company.  It found that the use of Evil Empire for baseball popularly refers to the Yankees.

The Yankees were trying to protect their image as well as an image they did not create.  Whether that decision came because they wanted the opportunity to control that image or monetize that image is something only the Yankees franchise will know and we may see in time if, when and how they use the phrase. 

The chance a small business being able to oppose a mark they never used to begin with is small.  The Yankees provided a large amount of evidence showing people referring to the Yankees as the Evil Empire and fans saw the term as a badge of honor.  Both the Yankees and “Evil Empire” as it refers to baseball are both famous marks, which are allowed great legal protection.  The simple take away is that a business brand can own rights to a mark they never claimed or used if the business brand is famous and the mark is famous. 


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