No, I’m not a Red Sox fan, but merely reporting on an interesting case from the TTAB. The New York Yankees filed an opposition to an individual’s trademark application for BASEBALLS (sic) EVIL EMPIRE and won. The interesting thing here is that the Yankees have never used EVIL EMPIRE as a trademark or in any other way. Nonetheless, trademark law has on occasion ignored the fact that someone doesn’t technically own a trademark but may still sue for infringement of the mark (or oppose an application in the USPTO). This happens when the party is known publicly by a certain name such that consumers would likely believe that the use of a similar trademark is associated with the party known by the name. In one case, IBM successfully defended the trademark BIG BLUE even though IBM never used the term BIG BLUE itself. This is a quasi right of publicity applied to trademark law. When someone applies to register a trademark that is likely to be associated with a certain person, group or other entity, that party has legal grounds to oppose the application. The TTAB has applied this provision of the trademark law broadly as illustrated by this case and others. The TTAB has ruled against applications for marks such as APACHE, US CUSTOMS SERVICE (and design), MARIA CALLAS, TO PROTECT AND SERVE (can you guess what group this might be associated with?), and SYDNEY 2000.
by Trademark Attorney Gene Bolmarcich