Judge Hits Home Run with the Trademark Trial and Appeal Board
The 2022 American League Most Valuable Player, Aaron Judge, recently prevailed in a trademark opposition proceeding at the USPTO. Judge has built an impressive resume during his eight major league seasons. In addition to MVP honors, he won the MLB Home Run Derby in his rookie season, top defensive and offensive awards, etc. After the 2022 season, he re-signed with the Yankees for a nine-year, $360 million contract and was subsequently named the team’s captain. In addition to his baseball accolades, Judge is a trademark owner and has licensed his marks to several licensees. His trademarks include ALL RISE and HERE COMES THE JUDGE.
ESPN reported on the Trademark Trial and Appeal Board (TTAB's) final decision, which issued on April 12, 2023. See https://www.espn.com/mlb/story/_/id/36189860/new-york-yankees-aaron-judge-wins-legal-dispute-all-rise-trademark. Judge and the Major League Baseball Players Association (MLBPA) opposed three applications filed by Michael P. Chisena of Long Island, New York. Chisena’s applications were for the marks, ALL RISE, HERE COMES THE JUDGE, and
Chisena filed the applications in July and October 2017 on an intent-to-use basis for “clothing, namely, t-shirts, shirts, shorts, pants, sweatshirts, sweatpants, jackets, jerseys, athletic uniforms, and caps” in International Class 25. Judge and MLBPA timely opposed the applications in March of 2018.
Much of an opposition proceeding resembles a federal lawsuit (e.g., initial pleadings, written discovery, depositions, etc.). There are dissimilarities of course. For example, when it comes time for trial, the litigants submit their evidence (e.g., affidavits, deposition transcripts, Internet printouts, etc.) electronically to the TTAB by way of notices of reliance. Instead of a trial in a courtroom with jurors, the litigants submit written briefs arguing their points while relying on the evidence that has been submitted. One or both parties can request an oral argument (i.e., hearing) in front of the three TTAB judges who will make the final decision.
In the Aaron Judge opposition, Judge and MLBPA introduced the following evidence:
• Testimony declaration of Evan Kaplan, Managing Director of MLB Players, Inc, a subsidiary of Opposer MLBPA, with exhibits (68 TTABVUE, 69 TTABVUE);
• Testimony declaration of Page Odle, President of PSI Sports Management, Inc., which represents Opposer Aaron Judge, with exhibits (70 TTABVUE, 71 TTABVUE);
• Testimony declaration and rebuttal testimony declaration of Aaron Judge, with exhibits (72 TTABVUE, 93-94 TTABVUE);
• Testimony declarations of licensees, with exhibits (48-67 TTABVUE);
• Rebuttal testimony declaration of Aaron Judge’s mother, Patricia Judge, with exhibits 91-92 TTABVUE);
• First Notice of Reliance, containing inter alia excerpts of the discovery depositions of Applicant Michael Chisena, his uncle, Thomas DeLucia, and t-shirt printer, Douglas O’Connor, on behalf of L.I. Printhouse, Inc., with exhibits (33-36 TTABVUE);
• Second Notice of Reliance, containing inter alia media coverage of Aaron Judge in print, online and broadcast formats, with exhibits (37-47, 76 TTABVUE);
and
• Testimony declaration of Duncan Hall, Records Request Processor for Internet Archive, with exhibits (73 TTABVUE).
Note, some of the declarations and exhibits are redacted due to sensitive information (e.g., financial figures).
The first three bullet points identify declarations from a representative of the MLBPA, Aaron Judge, and the sports agency that represents Judge. Each of the declarations contains testimony carefully prepared by the witnesses (and the attorneys). In relevant part, the declarations identify and authenticate additional exhibits. For example, Judge’s rebuttal declaration discusses and attaches “a true and correct copy of an excerpt from the website for the All Rise Foundation discussing the mission of the organization,” as well as ”a true and correct copy of an excerpt from the website for the All Rise Foundation listing the members of the organization’s Board of Directors.”
I found it especially interesting learning about a reserved section of Yankees Stadium known as THE JUDGE’S CHAMBERS:
THE JUDGE'S CHAMBERS section opened in May 2017. Fans cannot purchase tickets to sit in THE JUDGE'S CHAMBERS section. Rather, the eighteen fans who sit there each game are selected by the Yankees. As a further play on my name and tie to me, the fans chosen for THE JUDGE'S CHAMBERS section are given a black judge's robe with my number 99 on the back to wear during the game and a foam gavel with my "ALL RISE" nickname on it that they can take home. It is not uncommon to see fans sitting in THE JUDGE'S CHAMBERS section wearing white barrister's wigs in addition to robes and carrying signs that say ALL RISE. THE JUDGE'S CHAMBERS section has been a hit, and even U.S. Supreme Court Justice Sonia Sotomayor sat there during a game. I was honored to meet Justice Sotomayor after the game. Examples of press coverage of TIIE JUDGE'S CHAMBERS are attached as Exhibits 27, 100, 101, 102, 105, 108, 112, 114, 119, 129, 139, and 140 to Opposers' Second Notice of Reliance.
(72 TABVUE at ¶ 21) (emphasis added).
The Opposers’ evidence also included declarations and exhibits from ten different licensees, such as New Era and 108 Stitches, as well as Judge’s mother. What may surprise some readers is that the Opposers also relied on testimony of Chisena, Chisena’s uncle, and the company who printed t-shirts on Chisena’s behalf. It is often effective to use an “adverse” witness when making your case. For example, in a trademark dispute, you might want the opposing party to provide facts about when it started using mark (in order to establish priority of rights); to discuss the nature of its goods or how it is using the mark (to establish similarity/dissimilarity for the likelihood of question analysis); and to establish the other side’s intent.
In this opposition proceeding, it appears that Judge and MLBPA’s evidence was effective.
If you are opposing a trademark application--or someone opposes your application--consider the evidence you can/need to make your case, and how you will present it.
