New York Yankees Partnershipv.Evil Enterprises, Inc.

Trademark Trial and Appeal Board

Feb 8, 2013

No. 91192764 (T.T.A.B. Feb. 8, 2013)

Mailed: February 8, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

New York Yankees Partnership
v.
Evil Enterprises, Inc.
___________

Opposition No. 91192764
___________

Maryann E. Licciardi of Cowan, Liebowitz & Latman, P.C. for
the New York Yankees Partnership.

Gerard F. Dunne of the Law Offices of Gerard F. Dunne, P.C.
for Evil Enterprises, Inc.
____________

Before Cataldo, Wolfson, and Shaw, Administrative Trademark
Judges.

Opinion by Shaw, Administrative Trademark Judge:
Evil Enterprises, Inc. (“applicant”) has filed an
application to register on the Principal Register the mark
BASEBALLS EVIL EMPIRE, in standard character format, for
“clothing, namely, shirts, t-shirts, sweatshirts, jackets,
pants, shorts and hats” in International Class 25.1

1 Serial No. 76691096, filed July 7, 2008, based on an allegation
of applicant’s bona fide intention to use the mark in commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition No. 91192764
2
Registration has been opposed by the New York Yankees
Partnership (“opposer”). Opposer alleges that prior to
applicant’s constructive first use date, the term EVIL
EMPIRE has come to identify opposer’s baseball
entertainment services, and by extension, the source of
opposer’s wide variety of merchandise, including shirts, T-
shirts, sweatshirts, jackets, pants, shorts, hats and other
apparel.
As grounds for opposition, opposer alleges the grounds
of (1) priority and likelihood of confusion under Section
2(d) of the Trademark Act, (2) a false suggestion of a
connection with opposer under Section 2(a) of the Act, and
(3) disparagement of opposer and/or that applicant’s mark
brings opposer into contempt or disrepute, also under
Section 2(a) of the Act. In its answer to the notice of
opposition, applicant denied the salient allegations.
The Record
By rule, the record includes the application file and
the pleadings. Trademark Rule 2.122(b), 37 CFR § 2.122(b).
In addition, the parties introduced the following testimony
and evidence.
A. Opposer's evidence.
Opposer, by stipulation, submitted the Declaration of
Howard Smith, Senior Vice President of Licensing for Major
Opposition No. 91192764
3
League Baseball Properties, Inc. (the licensing agent for
opposer) with seventeen attached exhibits including news
stories using the term EVIL EMPIRE to refer to the Yankees,
Internet blogs and message boards where the term EVIL
EMPIRE is used to refer to the Yankees, a Wikipedia
baseball glossary, printouts of applicant’s web pages
showing use of the phrase BASEBALLS EVIL EMPIRE to refer to
the Yankees, and a dictionary definition of “evil.” By
Notice of Reliance, opposer submitted applicant’s responses
to certain interrogatories and admission requests; printed
publications; excerpts from internet blogs and message
boards; dictionary definitions; and status and title copies
of opposer’s pleaded registrations for its Yankees marks,
i.e., its “interlocking NY” mark and its “Yankees top hat”
mark.
B. Applicant's evidence.
Applicant, by stipulation, submitted the declaration
of Tracy Carey, the president of applicant, Evil
Enterprises, Inc., with two attached exhibits consisting of
a copy of applicant’s Facebook page and copies of emails
from fans; the declaration of Joseph A. Dunne, Esq.,
attorney for applicant, with five attached exhibits
consisting of news articles about baseball; and the
declaration of Gerard F. Dunne, Esq., attorney for
Opposition No. 91192764
4
applicant, with two attached exhibits consisting of a blog
article and a news story. By Notice of Reliance, applicant
submitted internet material in the nature of news stories,
articles, and advertisements, as well as opposer’s
responses to applicant’s interrogatories.2
Findings of Fact
Opposer is the owner of the well-known New York
Yankees baseball club (the “Yankees” or the “Club”),
founded in 1903. The Club is the owner of a number of
marks, including the two shown below, which are used on
player’s uniforms as well as on or in connection with a
wide variety of licensed goods and services, including the
same clothing articles that applicant has listed in its
application.3

The Club, through its licensing agent Major League
Baseball Properties (“MLBP”), has extensively licensed
various Yankees marks for a wide variety of goods and

2 The Board notes with approval the parties’ stipulation to
utilize testimony by declaration and the efficiencies realized
thereby. See TBMP §§ 528.05(a)(2) and 702.04 (October 2012) and
authorities cited therein.
3 Registration Nos. 1076665, 3320067, 1032767, and 3320070.
Opposition No. 91192764
5
services. The goods include apparel such as shirts, t-
shirts, sweatshirts, jackets, pants, shorts and hats, as
well as posters, toys, and a wide variety of other goods
sought by sports fans. The licensed merchandise is sold
over the Internet through opposer’s website and the website
of Major League Baseball, among others, as well as in
official team stores and through numerous national retail
store and sporting goods chains. Opposer’s retail sales in
the United States of licensed products bearing Yankees’
marks or otherwise promoting the Yankees have exceeded $1.1
billion since the year 2000.
Applicant, Evil Enterprises, Inc., filed its
application for the mark BASEBALLS EVIL EMPIRE, for use on
clothing, on July 7, 2008, based on an assertion of its
intent to use the mark in commerce. Applicant has not yet
filed an allegation of use of the mark. Applicant’s
website indicates that the goods are or will be directed to
consumers seeking merchandise relating to the New York
Yankees Baseball Club, proclaiming: “If you are passionate
about the New York Yankees then you have come to the right
place.”4

4 Applicant’s Responses to Opposer’s First Set of Requests for
Admission, Request No. 12.
Opposition No. 91192764
6
Both applicant and opposer agree that the term EVIL
EMPIRE, as it relates to baseball and these proceedings,
was coined in 2002 by the president of the rival Boston Red
Sox baseball club upon learning that a sought-after Cuban
pitcher, Jose Contreras, had signed a contract to play for
the Yankees and not the Red Sox. Upon hearing the news of
Contreras’ signing, Red Sox club president, Larry Lucchino,
is reported to have said: “The evil empire extends its
tentacles even into Latin America.”5 The term EVIL EMPIRE
has since been taken up by the media, Yankees’ fans, and
detractors as a reference to the Yankees. The Yankees have
“implicitly embraced” the nickname EVIL EMPIRE, including
playing ominous music from the soundtrack of the STAR WARS
movies at baseball games.6 Opposer, however, does not own
an application or registration for the term EVIL EMPIRE.
Nor has opposer used the mark itself in connection with any
goods or services.
Standing
Any person “who believes that he would be damaged by
the registration of a mark upon the principal register” may
oppose registration of the mark under Trademark Act § 13,
15 U.S.C. § 1063. To oppose registration, the opposing

5 Smith Declaration at 7.
6 Id. at 20.
Opposition No. 91192764
7
party must show both standing and valid grounds for
opposition. Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000). Standing requires
only that the petitioner have a “real interest” in the
opposition proceeding. Ritchie v. Simpson, 170 F.3d 1092,
50 USPQ2d 1023, 1025 (Fed. Cir. 1999). In most instances,
a direct commercial interest satisfies the “real interest”
test. Cunningham, 55 USPQ2d at 1844. Opposer has made its
pleaded registrations of record and has shown that the
registrations are valid and subsisting. Further, opposer
has demonstrated that applicant “was aware that the NEW
YORK YANKEES baseball team has been referred to and known
as the ‘Evil Empire’ by the press, fans, media and/or
public prior to filing Application Serial No. 76/691,096 on
July 7, 2008.”7 Accordingly, Opposer has established its
real interest in opposing the registration of applicant’s
mark for the identified goods. Inasmuch as opposer has
established its standing, opposer may raise any statutory
ground for opposition to registration of the mark under the
Trademark Act. Lipton Indus., Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185, 190 (CCPA 1982).

7 Applicant’s Responses to Opposer’s First Set of Requests for
Admissions, Request No. 3.
Opposition No. 91192764
8
Likelihood of Confusion
Priority
Opposer has established its priority through
applicant’s response to Opposer’s First Set of Requests for
Admissions indicating that applicant was aware “that the
NEW YORK YANKEES baseball team has been referred to and
known as the ‘Evil Empire’” prior to applicant’s filing
date of July 7, 2008.8 See Herbko Int’l Inc. v. Kappa Books
Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002).
Opposer asserts likelihood of confusion under Section
2(d) of the Trademark Act. 15 U.S.C. § 1052(d). Opposer
alleges that applicant’s mark, BASEBALLS EVIL EMPIRE, when
used in connection with applicant’s clothing so resembles
the mark EVIL EMPIRE which has become associated with
opposer, as to be likely to cause confusion.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence relevant
to the factors bearing on the likelihood of confusion
issue. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563 (CCPA 1973). Not all of the du Pont factors
are relevant to every case, and only factors of
significance to the particular mark need be considered. In
re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531,

8 Id.
Opposition No. 91192764
9
1533 (Fed. Cir. 1997). In appropriate cases, a single du
Pont factor may be dispositive of the likelihood of
confusion analysis. See Champagne Louis Roederer S.A. v.
Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459 (Fed.
Cir. 1998); and Kellogg Co. v. Pack 'Em Enter. Inc., 14
USPQ2d 1545 (TTAB 1990), aff'd, 951 F.2d 330, 21 USPQ2d
1142 (Fed. Cir. 1991). Moreover, it is the opposer’s
burden to establish facts sufficient to support the
conclusion that confusion, mistake, or deception is likely.
Bridgestone Americas Tire Operations LLC v. Fed. Corp., 673
F.3d 1330, 102 USPQ2d 1061, 1063 (Fed. Cir. 2012).
A. Opposer’s rights in EVIL EMPIRE

It is well-settled that in order to establish rights
in a mark, a party need not have actually used a mark if
the public nevertheless associates the mark with the goods
or services of that party: “even if a company itself has
not made use of a term, it may have ‘a protectable property
right in the term’ if the public has come to associate the
term with the company or its goods or services.” Big Blue
Prods. Inc. v. Int’l Bus. Machines Corp., 19 USPQ2d 1072,
1074 (TTAB 1991). See Martahus v. Video Duplication Servs.
Inc., 3 F.3d 417, 27 USPQ2d 1846, 1853 n.9 (Fed. Cir.
1993)(“[T]he public’s adoption of [the mark] to refer to
[opposer] is enough to establish trade name and service
Opposition No. 91192764
10
mark use.”); Nat’l Cable Television Ass’n., Inc. v.
American Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d
1424, 1428 (Fed. Cir. 1991)(“public use by others inures to
the claimant’s benefit and, where this occurs, public use
can reasonably be deemed use ‘by’ that party in the sense
of a use on its behalf.”); George & Co. LLC v. Imagination
Entertainment Ltd., 575 F.3d 383, 403, 91 USPQ2d 1786, 1798
(4th Cir. 2009)(“The Public Use doctrine . . . states that
abbreviations or nicknames used only by the public can give
rise to protectable trademark rights to the owner of a mark
which the public has modified.”); American Stock Exch.,
Inc. v. American Express Co., 207 USPQ 356, 363 (TTAB 1980)
(“[W]here the public has come to associate a term with a
particular company and/or its goods or services as a
result, for example, of use of the term in the trade and by
the news media, that company has a protectable property
right in the term even if the company itself has made no
use of the term.”); Coca Cola Co. v. Busch, 44 F.Supp. 405,
52 USPQ 377, 382 (D.Pa. 1942)(holding the public’s use of
“COKE” to refer to Coca-Cola sufficient to enjoin
defendant’s use of KOKE-UP for soft drinks). See also, 1
J. Thomas McCarthy, Trademarks and Unfair Competition
§ 7:18 (4th ed. 2012), and additional cases cited therein.
Opposition No. 91192764
11
Opposer has made of record hundreds of news articles,
stories, and blog entries, as well as admissions by
applicant, demonstrating that the term EVIL EMPIRE is
widely used as a shorthand reference or nickname for the
New York Yankees baseball club. The following is a
representative sample of newspaper articles and other
sources attached to the Smith declaration referring to the
Yankees as the EVIL EMPIRE:9
• The Denver Post, February 9, 2003, “There is so much
to love about baseball. . . . We love it that
baseball has an Evil Empire, a team to beat, the
perpetual villain in the New York Yankees.”
• The New York Post, October 17, 2003, “Yankees 6 Red
Sox 5 The Evil Empire lives!”
• Dallas Morning News, May 22, 2004, “[Rangers] traded
Rodriguez to the ‘Evil Empire,’ for second baseman
Alfonso Soriano and minor-leaguer Joaquin Arias.”
• Bangor Daily News, Oct. 16, 2004, “Onetime Red Sox
pitching ace Pedro Martinez . . . served up a two-
run homer to Yankee first baseman John Olerud that
put the Evil Empire up 3-0 in the sixth inning.”
• Ventura County Star, March 3, 2005, “The only thing
that is even more exciting to Perry is the end of
The Curse as the Red Sox finally defeated the Evil
Empire (the Yankees) en route to their first World
Series win in ages.”
• Daily News, July 23, 2008, “But these are the Yanks,
after all, and everything is breaking right again
for the Evil Empire since the All-Star break.”
• The Baltimore Sun, Nov. 3, 2009, “The Evil Empire
still stands poised to conquer all of baseball.”
• A Wikipedia glossary of baseball terms including a
definition of EVIL EMPIRE as a “common name for the

9 Smith declaration, Exhs. 4, 5, and 8.
Opposition No. 91192764
12
New York Yankees due to its wealth and winning by
far the most championships. This nickname is used
especially by fans of the Boston Red Sox and by fans
of other teams to a lesser extent. Even some
Yankees fans have been known to call themselves and
their team the ‘Evil Empire’ as a badge of honor.”

By notices of reliance, opposer submitted hundreds
more similar news stories, internet articles, blog entries,
and message board postings since 2002 showing that the
Yankees are known as the EVIL EMPIRE. Opposer also has
stated that it “implicitly embraced” the EVIL EMPIRE theme
by adopting music and other indicia from the STAR WARS
movies in connection with games played at Yankee Stadium.10
Applicant, in its response to Opposer’s First Set of
Requests for Admissions, has admitted that “the New York
Yankees baseball team has been referred to and known as the
‘Evil Empire’ by the press, fans, media, other Major League
baseball teams and/or public.”11 Moreover, applicant’s web
page proclaims that “Baseballs Evil Empire takes pride in
our merchandise and our great task of alerting all baseball
fans and the like to send the message out loud that the NY
Yankees are Baseballs Evil Empire . . . .”12

10 Smith Declaration at 20.
11 Opposer’s First Notice of Reliance, Exh. A, Applicant’s
Responses to Opposer’s First Set of Requests for Admissions,
Request No. 2.
12 Smith Declaration, Exh. 13.
Opposition No. 91192764
13
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.
Applicant nevertheless argues that opposer cannot
claim a protectable right in the term EVIL EMPIRE because
“[t]oo many baseball teams are now referred to by the media
as an ‘Evil Empire’” for the term to point exclusively to
opposer.13 We disagree.
Applicant’s evidence showing a small number of stories
discussing other sports teams as “evil empires” does not
counter the weight of opposer’s evidence. Rather,
applicant’s evidence shows only that these other teams
aspire to be in the position of the Yankees, i.e., spending
more on salaries and winning more championships. In short,
the record shows that there is only one EVIL EMPIRE in
baseball and it is the New York Yankees. Accordingly, we
find that opposer has a protectable trademark right in the
term EVIL EMPIRE as used in connection with baseball.
B. The fame of opposer's marks.

Having found that opposer has a protectable interest
in the term EVIL EMPIRE, we turn first to the factor of
fame, because the fame of the prior mark, if it exists,
plays a “dominant role in the process of balancing the

13 Applicant’s Br. at 7.
Opposition No. 91192764
14
DuPont factors.” Recot, Inc. v. M.C. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000). A famous mark
has extensive public recognition and renown and enjoys a
broad scope of protection or exclusivity of use. Bose
Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d
1303, 1305 (Fed. Cir. 2002); Kenner Parker Toys, Inc. v.
Rose Art Indus., Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456
(Fed. Cir. 1992). Regarding fame, the Court of Appeals for
the Federal Circuit has stated the following: [T]here is
“no excuse for even approaching the well-known trademark of
a competitor . . . and that all doubt as to whether
confusion, mistake, or deception is likely is to be
resolved against the newcomer, especially where the
established mark is one which is famous.” Nina Ricci
S.A.R.L. v. E.T.F. Enters. Inc., 889 F.2d 1070, 12 USPQ2d
1901, 1904 (Fed. Cir. 1989), quoting, Planter's Nut &
Chocolate Co. v. Crown Nut Co., 305 F.2d 916, 134 USPQ 504,
511 (CCPA 1962).
Fame may be measured indirectly in a number of ways:
by the volume of sales and advertising expenditures of the
goods and services identified by the marks at issue, “the
length of time those indicia of commercial awareness have
been evident,” widespread critical assessments and through
notice by independent sources of the products identified by
Opposition No. 91192764
15
the marks, as well as the general reputation of the
products and services. Bose Corp. v. QSC Audio Prods.
Inc., 63 USPQ2d at 1305-1306 and 1309.
Finally, because of the extreme deference that we
accord a famous mark in terms of the wide latitude of legal
protection it receives, and the dominant role fame plays in
the likelihood of confusion analysis, it is the duty of the
party asserting that its mark is famous to clearly prove
it. Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82
USPQ2d 1901, 1904 (TTAB 2007).
Opposer has submitted hundreds of news articles from
major metropolitan newspapers, such as The Boston Globe,
The New York Times, The Washington Post, The Los Angeles
Times, and The Atlanta Journal-Constitution, among others,
referring to the Yankees as the EVIL EMPIRE. These
articles, dating back to 2002, show that a broad segment of
the population has been exposed to the use of the term EVIL
EMPIRE to refer to the Yankees.
Based on the evidence, the term EVIL EMPIRE certainly
has achieved a level of fame such that most baseball fans
would recognize the term as a nickname for the Yankees. We
have no doubt that EVIL EMPIRE, in the world of baseball at
a minimum, has become famous in identifying the Yankees for
purposes of likelihood of confusion. EVIL EMPIRE, thus, is
Opposition No. 91192764
16
entitled to a broad scope of protection, especially since
applicant markets its goods to opposer’s baseball fans.
C. Similarity or dissimilarity of the goods, the channels
of trade, and classes of consumers.

The goods identified in the application, which include
shirts, t-shirts, sweatshirts, jackets, pants, shorts and
hats, are identical to the items of clothing sold by
opposer to promote its baseball team under its Yankees
marks.
Furthermore, because there are no restrictions in the
application, we must presume that applicant’s clothing will
be sold, not just over the Internet, but in all the normal
channels of trade for such goods, including the department
stores and sporting goods stores where opposer’s clothing
is sold; and that applicant’s clothing will reach all the
usual purchasers, including ordinary consumers who are also
among the purchasers for opposer’s clothing. See Octocom
Sys. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937,
16 USPQ2d 1783 (Fed. Cir. 1990).
It is also important to consider that t-shirts and
many of the other casual, everyday items of wearing apparel
identified in applicant’s application are relatively
inexpensive and are therefore likely to be purchased by
consumers on impulse, and without a great deal of care.
Opposition No. 91192764
17
This is a factor that increases the likelihood of
confusion. See Recot v. Becton, 54 USPQ2d at 1899 (“When
products are relatively low-priced and subject to impulse
buying, the risk of likelihood of confusion is increased
because purchasers of such products are held to a lesser
standard of purchasing care.”). This du Pont factor favors
opposer.
D. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We next consider the similarity of the marks as to
appearance, sound, connotation and commercial impression.
Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005). The test, under this du Pont factor, is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the services
offered under the respective marks is likely to result.
The focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). While we must
consider the marks in their entireties, in articulating
Opposition No. 91192764
18
reasons for reaching a conclusion on the issue of
likelihood of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has
been given to a particular feature of a mark. See In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
Opposer claims proprietary rights in the term EVIL
EMPIRE as a mark. Applicant’s mark consists of the words
BASEBALLS EVIL EMPIRE in standard characters and
incorporates opposer’s EVIL EMPIRE mark in its entirety.
EVIL EMPIRE is the dominant feature of both marks. The
presence of the term BASEBALLS in applicant’s mark merely
defines the reach of opposer’s “empire” and does little to
create a commercial impression different from opposer’s
mark, EVIL EMPIRE. Instead, the addition of the term
BASEBALLS to EVIL EMPIRE increases the likelihood of
confusion by defining opposer’s field of use and pointing
even more directly to opposer’s baseball team.
In comparing the marks in their entireties, we find
that on the whole they are similar in appearance, sound,
connotation and commercial impression and that the
additional wording in applicant’s mark is not sufficient to
distinguish the marks when used in connection with related
goods. This du Pont factor favors opposer.
Opposition No. 91192764
19
E. Remaining du Pont factors
We have considered any remaining arguments and
evidence put forth by applicant but in light of the fame of
the designation EVIL EMPIRE as applied to opposer, the
similarity of the goods, the similarity of the marks, and
the overlapping channels of trade, we find these arguments
unpersuasive. Hewlett-Packard Co. v. Packard Press Inc.,
281 F.3d 1261, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002) (“The
likelihood of confusion analysis considers all du Pont
factors for which there is evidence of record but ‘may
focus . . . on dispositive factors, such as similarity of
the marks and relatedness of the goods.’”).
F. Balancing the factors.
On balance, the relevant du Pont factors weigh heavily
in favor of a finding of likelihood of confusion. We
conclude that consumers familiar with usage of the term
EVIL EMPIRE to refer to opposer, upon encountering
applicant’s mark BASEBALLS EVIL EMPIRE for clothing, would
be likely to believe that the goods originate from or are
associated with or sponsored by the same entity.
Notwithstanding the similarity of the marks and the
similarity of the goods, applicant argues that its use of
BASEBALLS EVIL EMPIRE is a “spoof and parody of the New
Opposition No. 91192764
20
York Yankees baseball club, and thus no likelihood of
confusion can be established by opposer.”14
Parody, however, is not a defense to opposition if the
marks are otherwise confusingly similar, as they are here.
Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581,
1592 (TTAB 2008); Nike Inc. v. Maher, 100 USPQ2d 1018 (TTAB
2011); Columbia Pictures Indus., Inc. v. Miller, 211 USPQ
816, 820 (TTAB 1981) (“The right of the public to use words
in the English language in a humorous and parodic manner
does not extend to use of such words as trademarks if such
use conflicts with the prior use and/or registration of the
substantially same mark by another.”).
Section 2(a) - False Suggestion of a Connection
Section 2(a) prohibits registration of “matter which
may . . . falsely suggest a connection with persons, living
or dead, institutions, beliefs or national symbols.” 15
U.S.C. § 1052(a). To establish this claim, opposer must
prove (1) that applicant’s mark is the same or a close
approximation of opposer’s previously used name or
identity; (2) that applicant’s mark would be recognized as
such by purchasers, in that the mark points uniquely and
unmistakably to opposer; (3) that opposer is not connected
with the goods that are sold or will be sold by applicant

14 Applicant’s Br. at 1.
Opposition No. 91192764
21
under its mark; and (4) that opposer’s name or identity is
of sufficient fame or reputation that when applicant’s mark
is used on its goods, a connection with opposer would be
presumed. See Boston Red Sox Baseball Club LP v. Sherman,
88 USPQ2d at 1593; Buffett v. Chi-Chi’s, Inc., 226 USPQ
428, 429 (TTAB 1985). See also University of Notre Dame du
Lac v. J.C. Gourmet Food Imports Co. Inc., 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983).
Beginning with the first element, we find that
applicant’s mark is the same as or a close approximation of
opposer’s previously used name or identity. That is,
applicant’s BASEBALLS EVIL EMPIRE differs only slightly
from opposer’s EVIL EMPIRE by the addition of the term
BASEBALLS. Given that opposer has shown that it is
identified by the designation “Evil Empire” within the
context of a baseball club, i.e., the well-known New York
Yankees baseball club, this is a distinction without a
difference.
Similarly, we find that applicant’s mark would be
recognized by prospective purchasers as pointing uniquely
and unmistakably to opposer. The weight of evidence
submitted by opposer clearly demonstrates that the mark
BASEBALLS EVIL EMPIRE would be understood by consumers to
refer to the New York Yankees. Television, radio,
Opposition No. 91192764
22
newspapers, and the Internet are full of stories recounting
the exploits of baseball’s “EVIL EMPIRE.” Moreover,
applicant’s own web page is directed to selling clothing to
Yankees’ fans:
The official home of Baseballs Evil Empire. The
one source for all the latest tee-shirts and hats
for all the Yankee Fans around the world. Be
seen in our Yankee apparel and help us in our
message that the Yankees are truly “Baseballs
Evil Empire” . . . “Thank you, for being a Yankee
Fan”15

Simply put, we have no doubt that BASEBALLS EVIL EMPIRE
would be understood by consumers to point uniquely and
unmistakably to the New York Yankees because that is
precisely applicant’s demonstrated intent: to associate its
products with the New York Yankees baseball club.
Regarding the third element, opposer states that
applicant does not have any association with the Yankees
and applicant has not submitted any evidence to the
contrary, thus, we must presume that there is no connection
between the parties.
Finally, the evidence regarding “fame or reputation”
is sufficient to show that the term EVIL EMPIRE has such
fame or renown that the use of BASEBALLS EVIL EMPIRE as a
trademark by an unauthorized user will falsely suggest a
connection with the Yankees. Simply put, consumers, upon

15 Smith Declaration, Exh. 13.
Opposition No. 91192764
23
seeing applicant’s mark, BASEBALL EVIL EMPIRE, on clothing,
would be likely to assume that these goods are connected
with the Yankees baseball club when there is no such
connection.
After considering all of the testimony and evidence of
record in regard to the Section 2(a) false suggestion of a
connection factors, as well as the argument of counsel, we
find that applicant’s mark BASEBALLS EVIL EMPIRE falsely
suggests a connection with opposer.
Section 2(a) - Disparagement
Section 2(a) of the Trademark Act also prohibits
registration of a mark that “consists of or comprises . . .
matter which may disparage . . . persons, living or dead,
institutions, beliefs, or national symbols, or bring them
into contempt, or disrepute.” 15 U.S.C. § 1052(a). See
Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635, 1639
(TTAB 1988) (“Disparagement is essentially a violation of
one’s right of privacy -- the right to be ‘let alone’ from
contempt or ridicule.”).
The Board in Greyhound set forth the two elements of a
claim of disparagement: 1) that the communication
reasonably would be understood as referring to the
plaintiff; and 2) that the communication is disparaging,
Opposition No. 91192764
24
that is, would be considered offensive or objectionable by
a reasonable person of ordinary sensibilities.
As discussed above, given opposer’s evidence and the
references to opposer in applicant’s web page, we have no
doubt that the term BASEBALLS EVIL EMPIRE would be
understood as referring to opposer’s identity.
Whether use of the term BASEBALLS EVIL EMPIRE would be
considered offensive or objectionable by a reasonable
person is much less clear. Applicant argues that the
definitions of the term EVIL “speak for themselves in
outlining a host of offensive meanings.”16 But the
offensiveness of “evil” isn’t as obvious as a dictionary
definition would suggest, especially in matters of popular
culture.
Opposer’s evidence demonstrates that a number of its
fans have adopted the EVIL EMPIRE moniker as a “badge of
honor” so that it now has a “positive connotation” among
Yankees’ fans.17 The Smith declaration admits that opposer
has “implicitly embraced” the EVIL EMPIRE designation.18
For example, opposer has played the ominous theme from the
STAR WARS movies at baseball games. Opposer’s embracing
the EVIL EMPIRE characterization, whether explicitly or

16 Opposer’s Br. at 44.
17 Smith Declaration , pp. 8, 11.
18 Smith Declaration, p. 20.
Opposition No. 91192764
25
implicitly, undermines its argument that use of BASEBALLS
EVIL EMPIRE disparages the Yankees. In other words, having
succumbed to the lure of the dark side, opposer will not
now be heard to complain about the judgment of those who
prefer the comfort of the light. We find that use of the
term BASEBALLS EVIL EMPIRE is not disparaging to opposer.
Decision: The opposition is sustained on the ground of
likelihood of confusion under Section 2(d) of the Trademark
Act and on the ground that the mark falsely suggests a
connection with opposer under Section 2(a) of the Act. The
opposition is dismissed on the ground that the mark is
disparaging under Section 2(a) of the Trademark Act.