February 2013

February 25, 2013, by Mandour & Associates, APC

Los Angeles – A U.S. Patent and Trademark Office panel recently ruled that the New York Yankees have rights to its nickname Evil Empire and can prevent others from registering the name as a trademark, even though the team has never attempted to register the trademark.

On February 8, the Trademark Trial and Appeal Board held that the company Evil Enterprises Inc. could not trademark BASEBALL’S EVIL EMPIRE, which it planned to use on clothing with the Yankees logo and a depiction of a devil holding a pitchfork.  The TTAB said that consumers are likely to be confused by the clothing and believe that the goods are associated with the Yankees.

The team has never attempted to trademark the phrase, nor has it used the name in connection with any goods or services, yet the TTAB said the name has become linked with the Yankees in the minds of the average American to the point that the team has inherent rights to the name.

The panel cited a number of news articles about the 27-time World Series champions that referred to the team as the Evil Empire and concluded “there is only one Evil Empire in baseball and it is the New York Yankees.”

Evil Enterprises originally filed a trademark application for BASEBALL’S EVIL EMPIRE in 2008, which the Yankees filed a notice of opposition to in 2009.

Evil Enterprises argued that it should be able to trademark the name as it refers to any sports team that is willing to spend huge sums of money to get the best athletes.  The board rejected this argument, saying that articles that refer to other sports teams as Evil Empires merely indicate the teams want to be in the Yankees position and be able to afford a roster of players that can win more championships.

The board also rejected Evil Enterprises argument that the trademark is a “spoof and parody” of the team and therefore will not cause confusion.

Despite the ruling, Evil Enterprises said it will continue to produce its Evil Empire apparel, saying that just because it cannot register the trademark does not mean it cannot use the term as a brand identifier.  The team has never shown any indication that it plans sue for trademark infringement over the use of the name on apparel.

Evil Empire was initially coined by Larry Lucchino, president of the Boston Red Sox, after Jose Contreras signed with the Yankees instead of his team.  Red Sox fans quickly adopted the nickname as a way of disparaging the Yankees.  The Yankees, however, saw the name as a reflection of the team’s success and embraced the name in several ways, including playing Darth Vader’s theme song from “Star Wars” at home games.

February 12, 2013, by Mandour & Associates, APC

Los Angeles – Viacom International Inc., owner of the Nickelodeon television network, told a Los Angeles federal judge that Gibson Guitar Corp.’s lawsuit accusing Viacom of infringing Gibson’s trademarks should be dismissed because the alleged infringing goods were never sold in the United States.

The guitar manufacturer filed the lawsuit against Viacom in the California Central District in Los Angeles when it learned of sales of V-shaped ukuleles featuring the popular Nickelodeon cartoon character SpongeBob SquarePants.  Gibson claims that the ukuleles infringe its trademarked “Flying V” electric guitar and peg head design in violation of the Lanham Act.

In the complaint, Gibson said Viacom and codefendant John Hornby Skewes & Co. Ltd. (JHS), an instrument distributor in the United Kingdom, have used the trademarks of Gibson in order to mislead consumers into believing Gibson makes the ukuleles.

New York-based Viacom asked U.S. District Judge Dean D. Pregerson to dismiss the lawsuit because U.S. courts lack subject matter jurisdiction over the case.

Viacom claimed that the ukulele was manufactured by JHS in China and was only marketed and sold in Asia, Europe and Latin America.  Because the ukulele was never sold in the United States, Viacom argued that the Lanham Act does not apply therefore United States courts lack subject matter jurisdiction.

The media conglomerate also claimed that Gibson does not have any evidence to back up its assertion that the ukuleles are being sold in the United States and Viacom argued that statements based solely on information and belief should not be sufficient to keep the lawsuit alive.

Viacom admitted it had licensed the use of the SpongeBob trademarks to JHS for use on various products.  However, it claims the terms of the agreement expressly prohibit any of the products from being sold in the United States.

Viacom also claimed that it had nothing to do with the design of the ukuleles and have only been lumped into the lawsuit with JHS because said it licensed the SpongeBob trademarks to JHS, rather than because it had done anything wrong.

Gibson filed the lawsuit against Viacom in Los Angeles in December with a variety of claims including trademark infringement, trade dress infringement, counterfeiting, unfair competition and false designation of origin.