In honor of Foley Hoag’s new New York office, we here at the Boston office reluctantly present a victory by the New York Yankees — albeit not one won on the baseball diamond.
In a trademark opposition that has been underway since 2009, the Yankees have successfully blocked the registration of two marks intended to parody their own: (1) the word mark, THE HOUSE THAT JUICE BUILT (instead of THE HOUSE THAT RUTH BUILT); and (2) a design mark that replaces the Yankees’ baseball bat with a syringe.
IET Products and Services applied to register these “parody marks” for an assortment of merchandise similar to the sort the Yankees sell to promote their team. IET’s stated intent was to “play off of the idea that steroids are a player on MLB teams and the Yankees.” But the Yankees contended that these marks were not eligible for registration because they could be confused with the Yankees’ marks and/or dilute their fame. The Trademark Trial and Appeals Board (TTAB) did not reach the question of likelihood of confusion because the Yankees prevailed on their dilution claim.
The Fame Analysis
As an initial matter, the TTAB found that both of the Yankees’ marks were famous for purposes of the dilution claim. The design mark was subject to a standard fame evaluation. The TTAB was swayed by its lengthy history, sponsorship deals with other major brands, and the overwhelming volume of sales of Yankees merchandise generally (despite the Yankees’ failure to distinguish the percentage of those sales that directly involved the design mark).
The word mark, THE HOUSE THAT RUTH BUILT, was analyzed differently. Yankee Stadium has been known by that nickname since 1923 (Babe Ruth joined the Yankees in 1920). The press and the public have used it extensively, but the Yankees have not made widespread use of it as a trademark, so IET argued that the phrase was not famous as a trademark. The TTAB explained that “a nickname or trade name for a product or service may acquire trademark significance when the public has come to know and use it as such even if the company itself has made no use of the term.” The Yankees submitted over 2,600 news stories using the phrase, from just 2000 to 2007, which was sufficient to convince the Board of its fame.
Dilution and Parody
Once the marks were found to be famous, the case for dilution became straightforward. A consumer seeing IET’s marks would immediately be reminded of the Yankees’ famous marks, even if they wouldn’t necessarily believe the goods came from the same source (the definition of dilution). IET admitted as much: the applied-for marks, because they are parodies, were intended to call to mind the original.
IET argued that its marks’ status as parodies meant they were registrable, because parody is a defense to dilution. As the Board pointed out, however, the statute only allows that defense where the parody is used “other than as a designation of source for the person’s own goods or services.” By applying to register its parodies as trademarks – by definition, a designation of source for IET’s own products – IET shot itself in the foot. Parody might have protected IET from a dilution action if it had simply plastered its steroid jokes on merchandise, but it doesn’t mean those jokes can be registered as trademarks.
And so, as they often do, the Yankees prevailed. One might even say (if one was a fan of very bad jokes), that they hit it out of the park.