The New York Yankees won a ruling preventing the registration of a slogan and logo that mocked alleged steroid use by the team’s players.
The applicants sought to register three marks that included “THE HOUSE THAT JUICE BUILT” and a design incorporating a Yankees-style stars-and-stripes top hat and a syringe with a red circle/slash across it.
According to the Trademark Trial and Appeal Board (TTAB) decision, “JUICE is a common noun with multiple meanings, used in Applicant’s mark to refer to performance-enhancing drugs.”
The Yankees have registered a trademark for “THE HOUSE THAT RUTH BUILT,” referring to player Babe Ruth.
Yankee player Alex “A-Rod” Rodriguez has admitted to using steroids and other performance-enhancing substances.
The applicants contended that their proposed mark was intended as a fair-use parody and not intended to be confused with the Yankees’ marks. When they sought to register their marks in 2008, soon after the release of a report on performance-enhancing drug-use in baseball, the Yankees opposed the registration, claiming that the use of the parody marks would cause “dilution-by-blurring.”
The TTAB agreed with the Yankees, finding that the slogan and syringe logo would dilute the team’s trademark rights.
Under Section 43(c)(3) of the Trademark Act, trademark dilution does not include:
Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services… [or] any noncommercial use of a mark.
(Emphasis in TTAB decision.)
The TTAB concluded:
This proceeding is before the Board because Applicant is not seeking merely to make ornamental, expressive, or noncommercial use of its marks, but because Applicant has applied to register its trademarks as designations of the source of Applicant’s own T-shirts, baseball caps, hats, jackets, sweatshirts, and mugs. The fair use exclusion is typically inapplicable when registration is sought, and it does not apply here.
Those who want to parody famous trademarks may have a free speech right to do so – but not necessarily to make money in the process.
The owner of a trademark can block the registration of a parody version, as in the Yankees case, or can sue the seller of parody merchandise, as in a recent case involving t-shirts featuring the slogan “Ain’t Laurent Without Yves.”