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May 8 --A New York company's attempt to register “The House That Juice Built” and a so-called parody of the New York Yankees' baseball-bat-and-top-hat logo using a syringe instead of a bat diluted the Yankees' trademark rights, the Trademark Trial and Appeal Board ruled May 8.
The board sustained the Yankees' opposition to three trademark registration applications, rejecting the argument that the fair use provision of the federal trademark law included the concept of a parody trademark.
This decision was notable in a few different ways, according to a trademark practitioner who spoke with Bloomberg BNA.
“It's a timely decision with A-Rod going past Willie Mays's home run record,” said Eric J. Ball of Fenwick & West LLP, Mountain View, Calif., making a reference to Yankee player Alex Rodriguez's admission in 2009 that he had used performance-enhancing drugs, which are often referred to by the slang term “juice.”
First, according to Ball, this decision emphasized that while someone can display a parody of someone else's trademark, the parody itself cannot be used as a trademark.
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“It reinforces that trademarks and especially federal registrations are commercial in nature. They identify what someone is selling,” he said. “In that context, parody in general is harder to prove. It doesn't stop you from any parody. You can still parody a famous mark as long as you're using your own mark that is different from it.”
The problem in this case was that the applicant was trying to claim that the parody itself was its own trademark, Ball said, which has the effect of blocking other parodists. “They're trying to say that they're the only ones that can parody in this way, by getting a federal registration.”
Ball said that this ruling was also notable because when the TTAB is faced with both likelihood of confusion and dilution arguments, the board almost always disposes of the matter based on the infringement claim, not the dilution claim.
In this case, however, the board ruled on the dilution claim, which is a harder claim to make because the trademark owner bears the additional burden of proving that its trademark is a famous mark.
Furthermore, Ball said that this issue could conceivably have a connection with two other ongoing trademark-related controversies--the Washington Redskins trademarks and the attempt by a Pacific Northwest Asian-American rock band to register its name “The Slants.”
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Those cases center on the question of whether the trademarks are disparaging or offensive, and thus whether they can be registered under the federal trademark statute.
The Redskins case is currently before the U.S. District Court for the Eastern District of Virginia. However, in the Slants case, the U.S. Court of Appeals for the Federal Circuit recently announced that it would consider en banc whether the ban on registering disparaging trademarks is a violation of free speech rights.
The Yankees decision might cut across those issues in that it emphasizes that registration of a trademark is commercial speech and that commercial speech traditionally gets less protection under the First Amendment than other kinds of speech, Ball said.
The Yankees case goes back to late 2008 and early 2009, when Steven Lore and his company, IET Products and Services Inc. of New York, filed three applications with the Patent and Trademark Office to register two trademarks for T-shirts, caps, other kinds of apparel and coffee mugs (Application Serial Nos. 76/691,994, 77/404,369 and 77/576,227).
One of the purported trademarks was the phrase “The House That Juice Built,” apparently a play on the term “The House That Ruth Built,” a term widely used to indicate Yankee Stadium as well as the historical legacy of the New York Yankees professional baseball club.
The other trademark was a play on the Yankees' logo, which incorporates images of a top hat decorated with red-and-white stripes and white stars on a blue hat band and a baseball bat. Sometimes this logo is displayed against the image of a baseball outlined in red and sometimes it also incorporates the name “Yankees” or other elements.
The logo filed by IET kept the red-white-and-blue top hat but instead of a baseball bat, it used a hypodermic syringe-and-needle over which was placed a “universal prohibition” symbol--a red circle with a diagonal line crossing the center.
In April 2009, the New York Yankees Partnership, which operates the baseball club, filed a petition with the PTO opposing IET's attempt to register these trademarks.
The Yankees argued that IET's purported trademarks would cause confusion with its own trademarks, would dilute by blurring its famous trademarks and falsely suggested an association between IET and the Yankees.
In sustaining the Yankees' opposition, the board found that the baseball club had presented sufficient evidence to establish that its asserted trademarks--the top-hat logo and the nickname for Yankee Stadium, “The House That Ruth Built”--were famous, which is a necessary element of a dilution claim under Section 43(c) of the Lanham Trademark Act of 1946, 15 U.S.C. § 1125(c).
Having cleared the “fame” hurdle, the board went on to find that IET's use of the top-hat-and-syringe logo and “The House That Juice Built” were likely to dilute by blurring the unique association between the Yankees and their trademarks.
The board rejected IET's argument that its uses constituted fair use because they were parodies.
The board noted that Section 43(c)(3) of the Trademark Act, 15 U.S.C. §1125(c)(3)(A), does exclude from liability for dilution “any fair use.” However, it emphasized that this provision explicitly specifies that this fair use exemption does not cover using it “as a designation of source for the person's own goods or services.”
The board thus ruled that IET could not register its purported trademarks, resolving only the question of dilution and disposing of the remaining arguments as moot.
The board's decision was authored by Administrative Trademark Judge Susan J. Hightower, and joined by the board's Chief Judge Gerard F. Rogers and Judges Susan M. Richey, David E. Bucher, Albert Zervas, Peter W. Cataldo and Lorelei Ritchie.
The Yankees were represented by Cowan, Liebowitz & Latman P.C., New York. IET was represented by Lombard & Geliebter LLP, New York.
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Full text at http://pub.bna.com/ptcj/91189692TTAB20150508.pdf.
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