It was some ten years ago, while the Boston Red Sox were still mired in the 86-year championship drought brought on by the Curse of the Bambino, that their president Larry Lucchino hung the moniker “Evil Empire” on the New York Yankees. The Yankees, as Lucchino should have anticipated, took it as a compliment and good naturedly embraced the honorific, even playing the Darth Vadar musical motif at home games. The Yanks have not, however, gone so far as to use the term “Evil Empire” on team merchandise or otherwise as a trademark, as they have with their more familiar and flattering nickname “Bronx Bombers.” So what happened when an apparel maker unaffiliated with the team sought to register “BASEBALLS EVIL EMPIRE” as a trademark? Duuh Duuh da da da Duuh Duuh da da da Duuh Duuh dun-dun-dun-duuuuh . . .
The registration was rejected as creating a likelihood of confusion, i.e., that the Yankees were the source of, or sponsored or approved, merchandise bearing the term “BASEBALLS EVIL EMPIRE.” And that rejection has now been affirmed by the Trademark Trial and Appeal Board, which found after reviewing hundreds of press clippings submitted by the Yankees that “there is only one EVIL EMPIRE in baseball and it is the New York Yankees.”
The case is further demonstration of the point, emphasized in a recent post here, that trademark is not a verb. One cannot simply “trademark” a phrase; rather it must come to be associated by some segment of the public with a particular source of goods or services. More interestingly, it shows that this association with a particular source can come about entirely though the use of the phrase by third parties.