IP Law Daily, TRADEMARK—TTAB: Aaron Judge wins opposition to registration of ALL RISE and HERE COMES THE JUDGE marks, (Apr 17, 2023)

By Kevin M. Finson, J.D.

The TTAB refused registration of the proposed marks ALL RISE and HERE COMES THE JUDGE for use with apparel because they were likely to be confused with common law rights owned by baseball player Aaron Judge.

A baseball player’s opposition to a registration for judicial-sounding marks that played on his surname and were used in the context of baseball was sustained, the Trademark Trial and Appeal Board has held in a precedential opinion. The opposition to registration of Applicant’s three marks was sustained on the grounds of priority and likelihood of confusion under Section 2(d) of the Trademark Act., and registration to Applicant was refused (Major League Baseball Players Association v. Chisena, April 12, 2023, Heasley, D.).

Michael Chisena sought registration on the Principal Register of the standard character marks ALL RISE and HERE COMES THE JUDGE, as well as a design mark consisting of a balance scale and gavel superimposed over a baseball diamond, for use with “clothing, namely, t-shirts, shirts, shorts, pants, sweatshirts, sweatpants, jackets, jerseys, athletic uniforms, and caps” in International Class 25. The Major League Baseball Players Association (MLBPA) and baseball player Aaron Judge, one of its members, jointly opposed all three registrations on the grounds of likelihood of confusion, false suggestion of connection, use of a particular living individual’s name without consent, and likelihood of dilution by blurring. MLBPA and Judge argued that the timing of Chisena’s applications was suspicious because they were filed immediately after Aaron Judge was prominently featured in the 2017 All Star Home Run Derby and All Star Game. Chisena averred that, at the time of his applications, he was not aware of Aaron Judge at all and was not a baseball fan, and that the apparent similarity was mere coincidence.

Entitlement to a statutory cause of action. Chisena argued that Judge lacked standing to assert common law trademark rights because he had granted MLBPA exclusive rights to license his name, likeness, and other personal indicia, and that MLBPA lacked standing to assert Judge’s claims of false suggestion of a connection and use of his name without consent. The board held that both opposers had a real interest in the proceedings and the marks and rights at issue because each stood to lose from infringement.

Priority. MLBPA and Judge presented oral testimony, in this case, testimony by written declarations, and numerous examples of apparel that play on the judicial meaning of Judge’s surname from years prior to Chisena’s first claimed use. Chisena raised numerous arguments addressed to the validity of the claimed common law rights, including lack of specific enough pleading, distinctiveness, that the mark was merely a surname or a nickname, and that they failed to function as source indicators. The board held that on each of these points the weight of the evidence clearly favored MLBPA and Judge, as they had produced documentary evidence of the sales of apparel with the marks at issue, playing off Judge’s name, since the beginning of Judge’s career. Chisena did not present anything to controvert MLBPA and Judge’s earlier date of first use, so the board held that they had priority. TTAB held, by a preponderance of the evidence, that Opposers have established priority of use of ALL RISE and HERE COMES THE JUDGE, as well as judicial designs such as a gavel, courthouse image, or the scales of justice, as trademarks on t-shirts, baseball caps, and other athletic apparel.

Likelihood of confusion. Chisena did not address the DuPont factors in his brief, which the board took to mean he conceded likelihood of confusion in the event that MLBPA and Judge prevailed on priority.

Because the Board found that (1) the parties’ marks are the same or similar; (2) their goods are identical in part and otherwise related; (3) they would move in the same or overlapping trade channels; and (4) they are offered to the same class of purchasers, some of whom would engage in “impulse” purchasing, it concluded that Applicant’s marks, as used on, or in connection with, the apparel goods identified in his applications, so resembled Opposers’ previously-used common law marks as to be likely to cause confusion or mistake, or to deceive under Section 2(d) of the Trademark Act.

The board sustained the oppositions on the basis of priority and likelihood of confusion. It did not reach the Opposer's other grounds for opposition.

The case is Opposition Nos. 91240180 (parent), 91242556 and 91243244.

Attorneys: Lori J. Shyavitz (McCarter & English, LLP) for Major League Baseball Players Association and Aaron Judge. Charles R. Hoffmann (Charles R. Hoffmann P.C.) for Michael P. Chisena.

Companies: Major League Baseball Players Association

Cases: Trademark USPTO