Introduction

MLB Wins “ALL RISE” Trademark Dispute on behalf of Aaron Judge

MLB Wins “ALL RISE” Trademark Dispute on behalf of Aaron Judge

On April 12, 2023, The United States Trademark Trial and Appeal Board (“TTAB”) sustained Major League Baseball’s opposition to the trademark registration of “ALL RISE” trademark application in connection with clothing on originally filed on July 14, 2017. (Ser. No. 87528414).

MLB alleged in their opposition that ALL RISE, alone and with other terms, is widely-used and generally known nickname for Yankees slugger, Aaron Judge. MLB claims the name ALL RISE is associated with the fame and reputation of Judge and has acquired strong nationwide common law rights, in connection with apparel.

This trademark case is notable because the New York Yankees did not file any trademarks for “ALL RISE,” which resulted in a third party obtaining the presumption of priority by filing their application first. As a result, the Yankees had to rely on common law rights and opposition proceedings to protect their claimed rights to the “ALL RISE” mark. This highlights the importance of proactive trademark registration to establish priority and protect valuable brand assets.

In the absence of any filed trademark applications, MLB relied on their asserted common law rights to establish priority.

To establish prior common law rights, they must prove by a preponderance of the evidence that their marks are distinctive, inherently or otherwise, and that they acquired rights in the marks prior to any date on which Applicant can rely. ARSA Distributing, Inc. v. Salud Natural Mexicana S.A. de C.V., 2022 USPQ2d 887, at *14- 15 (TTAB 2022); DeVivo v. Ortiz, 2020 USPQ2d 10153, at *3 (TTAB 2020); Kemi Organics v. Gupta, 126 USPQ2d 1601, 1605-06 (TTAB 2018).

The Applicant who filed the ALL RISE intent-to-use trademark did not use the marks in commerce until after he filed the three involved applications, so the earliest dates on which he can rely are his constructive use filing dates: July 14, 2017 for the standard character marks ALL RISE and HERE COMES THE JUDGE, and October 12, 2017 for the design mark. Zirco Corp. v. Am. Tel. and Tel. Co., 21 USPQ2d 1542, 1544 (TTAB 1991)

The evidence submitted by MLB to establish priority included sworn testimony by MLB’s Director of Licensing who testified that as of June 5 2017, MLB was selling “ALL RISE” t-shirts nationwide, one month before the trademark application was filed giving its constructive use date.

The TTAB concluded that:

“Considering the applicable evidence as a whole, as if each piece were part of a puzzle, we find 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 Between Identical Marks

Once MLB’s priority was established, conducting a “likelihood of confusion” analysis between the two instances of “ALL RISE” was a mere formality.

To determine whether there is a likelihood of confusion between the marks under Section 2(d), we analyze the evidence and arguments under the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 566 (CCPA 1973).

In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods.'”)

TTAB Decision on “ALL RISE” and other Aaron Judge Trademarks

The TTAB opinion stated: “The oppositions to registration of Applicant’s three marks are sustained based on priority and likelihood of confusion under Section 2(d), resulting in the refusal of registration to Applicant.” The TTAB further explained that they considered all arguments and evidence, and weighed relevant DuPont factors. Given that the parties’ marks are the same or similar, their goods are identical or related, they operate in the same trade channels, and target the same class of purchasers including “impulse” buyers, the TTAB concluded that Applicant’s marks, as used on or in connection with the apparel goods identified in his applications, resemble Opposers’ previously-used common law marks and are likely to cause confusion, mistake, or deception under Section 2(d) of the Trademark Act.

The lesson from this case serves to reinforce the fundamental principle in trademark law that priority is awarded to the first use in commerce, rather than the first filing of a trademark application.

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