Major League Baseball Players Ass'n & Aaron Judge v. Chisena
| Docket Number | Opposition 91240180,91242556,91243244 |
| Decision Date | 12 April 2023 |
| Parties | Major League Baseball Players Association and Aaron Judge v. Michael P. Chisena |
| Court | Trademark Trial and Appeal Board |
THIS OPINION IS A PRECEDENT OF THE TTAB
Hearing: June 30, 2022
Lori J. Shyavitz and Alexander T. Hornat of McCarter &English for Major League Baseball Players Association and Aaron Judge.
Charles R. Hoffmann of Charles R. Hoffmann P.C., for Michael P. Chisena.
Before Cataldo, Heasley, and Larkin, Administrative Trademark Judges.
Heasley, Administrative Trademark Judge.
Applicant, Michael P. Chisena, seeks registration on the Principal Register of the standard character marks ALL RISE[1] and HERE COMES THE JUDGE,[2] as well as the design mark (Image Omitted),[3] all for "clothing, namely, t-shirts, shirts, shorts, pants, sweatshirts, sweatpants, jackets, jerseys, athletic uniforms, and caps" in International Class 25.
Opposer Major League Baseball Players Association (the "MLBPA") filed Notices of Opposition challenging registration of Applicant's three marks.[4] Aaron Judge, one of its members, jointly opposes registration of Applicant's design mark. Opposers' claims are for likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), false suggestion of connection under Section 2(a), 15 U.S.C. § 1052(a), use of a particular living individual's name without his consent under Section 2(c), 15 U.S.C. § 1052(c), and likelihood of dilution by blurring under Section 43(c), 15 U.S.C. § 1125(c). Applicant's Answers denied the salient allegations in each Notice of Opposition.[5] By Order of the Board, the three opposition proceedings were consolidated, with Opposition No. 91240180 designated as the parent case. Unless otherwise stated, all references to the parties' briefs and evidence are to that opposition proceeding.[6]
The parties fully briefed the issues and appeared by counsel for oral argument.
The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the files for the involved applications.
In addition, Opposers introduced the following evidence:
Applicant submitted the following:
The parties stipulated that the discovery deposition testimony of third-party witnesses Thomas DeLucia and Douglas O'Connor and exhibits thereto may be offered into evidence by any party as if taken during the offering party's testimony period, subject to the other party's objections (32 TTABVUE).
Opposers list their evidentiary submissions on pages 10-11 of their main trial brief, 97 TTABVUE 12-13, and Applicant lists his submissions on pages 9-10 of his trial brief, 104 TTABVUE 10-11. We have reviewed and considered the full record before us, and will identify relevant and probative evidence as appropriate in our discussion of the merits.
Aaron Judge is an outfielder for the New York Yankees of Major League Baseball.[9]Drafted by the Yankees in 2013, he honed his game with its minor league teams until the Yankees called him up in August 2016. In his first and second Major League games, he hit home runs in his first at-bats.[10]
In the 2017 season, the Yankees named Mr. Judge the Opening Day starting right fielder-a position he holds to this day.[11] He was named American League Rookie of the month in April, May, and June 2017, and American League Player of the month in June and September, 2017.[12] By the beginning of the midsummer All-Star break, he led Major League baseball in home runs and on-base percentage, among other statistics, and was invited to participate in the All-Star Home Run Derby, which was broadcast to a national audience on July 10, 2017, and which he won.[13] The next night, he played in the All-Star Game, also broadcast to a national audience, as the American League team's starting right fielder, having received more votes than any other American League player.[14]
Since Mr. Judge was called up to the Major Leagues, the media, the fans, and the Yankees have played on his surname, "Judge."[15] For his first Major League home run on August 13, 2016, the Yankees radio play-by-play announcer said [16] In May 2017, barely two months into his rookie season, he was on the cover of Sports Illustrated, the article entitled
(Image Omitted)[17]
Other publications preferred "HERE COMES THE JUDGE":
(Image Omitted)[18] In May 2017, Yankee Stadium opened THE JUDGE'S CHAMBERS-three rows behind Mr. Judge in right field in which 18 fans are given black judge's robe t-shirts with his number 99 on the back and a foam gavel with ALL RISE on it, which they can take home:
(Image Omitted)[19]
At the 2017 Home Run Derby, a number of fans wore judges' robes and/or wigs and brought signs that read "ALL RISE", which they raised whenever he was at bat.[20]
Since August 13, 2016, when he was called up to the Majors, Mr. Judge has been a member of the MLBPA, the players' union for Major League baseball players.[21]With his approval, the MLBPA has licensed numerous third-party licensees to use word marks, with and without design marks referring to Mr. Judge on apparel, such as t-shirts and baseball caps, for which the licensees pay royalties.[22] Mr. Judge had the best-selling jersey in Major League baseball in 2017, his rookie year; in fact, it achieved top-seller status before the July 11, 2017 All-Star Game.[23] In 2017, Aaron Judge was the only member of a Major League baseball team with a surname that had a judicial or legal connotation.[24] Consequently, the licensed apparel products referring to Mr. Judge typically include phrases associated with the legal and judicial system, such as ALL RISE and HERE COMES THE JUDGE, and judicial indicia, such as a gavel, courthouse image, or the scales of justice.[25]
On July 14, 2017, several days after the Home Run Derby and the All Star Game, Applicant, Michael P. Chisena, filed two applications for the standard character marks ALL RISE and HERE COMES THE JUDGE.[26] On October 12, 2017, he filed his application to register the design mark:[27]
(Image Omitted)
Again, all three applications are based on intent-to-use, and all three identify "clothing, namely, t-shirts, shirts, shorts, pants, sweatshirts, sweatpants, jackets, jerseys, athletic uniforms, and caps."
Applicant, who lives in Nassau County, Long Island, avers that "At the time I filed my trademark applications, I was not aware of any usage of the marks 'All Rise' and 'Here Comes the Judge' on apparel items, or any usage at all of such marks by Aaron Judge or the New York Yankees."[28] In fact, he states, he conceived of and created the three marks between 2012 and 2015, but during that time [29] He explains that, while he played Little League baseball from approximately ages 6 to 15, [30]
Rather he explains, his creation of the marks stemmed from his interest in developing a new sports product.[31] After college, he took university courses in sports management pertaining to economics, facility design, law, marketing, public and media relations and stadium/arena management.[32] He then served as a graduate assistant in a university athletic department with responsibilities to administer daily operations for NCAA Division II athletic sporting events, and earned a Master's degree in Sports Management.[33] Armed with this background, he designed and developed an improved batting tee, for which he obtained two patents.[34] Interested in cross-marketing the batting practice tee with a baseball-themed line of clothing,[35]he states, he started creating potential product samples in a digital format showing "All Rise" and "Here Comes the Judge" in later 2015.[36] With the help of his uncle Thomas DeLucia's...
To continue reading
Request your trial