NY Yankees vs….. Weed N’ Chicken? Trademark Application Drama [Brian’s TM Watch]

Hey everyone it’s attorney Brian Russ coming at you with another Brian trademark watch episode. So again, I go over these episodes here, trademark watch, just to kind of show you what’s going on in the trademark world. I’ll show you new applications, new things and just kind of try to explain, read the tea leaves a little bit and see what’s going on. If you’ve watched these episodes before you know that I’m a huge sports fan. I think that in the sports world, it’s just so ripe with intellectual property issues, IP issues, specifically as it relates to branding and specifically as it relates to trademarks. Because if you think about it, fandom in sports world is really fandom of a brand more than anything else. The brand issue, is that, nobody’s rooting for the New York City American League baseball team, you’re rooting for the Yankees. Nobody’s rooting for the New York National League baseball team, you’re rooting for the Mets and things like that. And so again, the idea this brand association is so critical to these teams, it is really what they staked their livelihood on and if they were to lose their name, or lose their branding, or if it’s interrupted by somebody, it can be especially problematic. The brands are so valuable and such an integral part of the community that a lot of people will just kind of glom on to the brands and not even realize that they may be unintentionally infringing. They just think it’s so commonplace, it’s basically fair use. So today’s video goes over how these types of issues can morph into bigger problems for these existing brands. So what I want to focus on today is the New York Yankees. I’d say one of the most, if not, THE MOST recognizable American sports brand. They mean so much to so many people, such a storied franchise. Here we’re looking at the trademark registration for the interlocking NY logo. Again, I would argue this is one of the most recognizable brands in the world, not just the United States but in the world. And we’re just looking at the US registration today, I’m sure they have trademark registration across the globe. For this particular logo. And what I found interesting was recently they filed an additional application for a similar logo. I’m going to go ahead and pull it up here. And so this was put in by the Yankees and New York Yankees partnership, that’s the group that is owning a lot of their IP properties and you can see this logo, it’s an NY interlocking logo, seems a little bit older. You can see it’s not as professionals as you’d see something nowadays, just because of the asymmetry and such. I looked it up and apparently this was the logo the Yankees used for a long time, in the early 1900s. So I’m assuming what they’re doing now is they’re planning to release it on some merch, or they want to make sure it’s protected in case somebody else tries to use it. It’s a very common practice and they probably just did an IP portfolio review and realized that they didn’t have the rights locked down on this one and they want to make sure it’s locked down which is which is fairly common. But what I found interesting about this trademark application, is that there are some issues going on with it. A non final office action was issued, which we’re going to go over in a minute. But then what I also found interesting is that there’s an opposition proceeding going on with this application. So what I did is I went ahead and looked up this opposition proceeding and so it looks like an applicant named Gamers Academy Incorporated, has a filing that is now an opposition proceeding. Opposition proceeding occurs when somebody files a trademark application that has been approved for publication by the trademark office and it goes to publication. So this is when it’s published in the Gazette for 30 days and somebody can come in and oppose it. And so in this case, the opposing parties are the Sterling Mets LP which I’m assuming is the group that owns the Mets, the Athletics Investment Group LLC, which I assume is the group that owns Oakland Athletics, and the New York Yankees partnership. So I found this interesting because I thought wow, what what could this possibly be that we have the A’s, the Mets and Yankees opposing this trademark application. So we went ahead to pull up the trademark application and you can see here, somebody tried to trademark this logo, Athletics Mercado with an interlocking A and M. So what I’m pursuing is that the stylized font in this is likely an issue to the Yankees, the Mets and the Athletics and you can see all the stuff they filed in there, and you can see the prosecution history and at this point, it’s been filed. The opposition proceeding has been instituted, and then they just continue to suspend it, suspend it, suspend it, which would usually mean that the parties are trying to work something out privately. So the parties haven’t actually like submitted anything outlining their opposition, they’ve just started having these discussions. And so what I found interesting though, and you know, so again, just reading the tea leaves on this one, and what I’m thinking is, the A’s they have stylized logo that probably looks like this one, at least they use in old days. I mean, as just a consumer, a baseball fan, I look at this, the interlocking A&M and it to me it brings to mind the New York Mets logo. I guess the Yankees are probably going to try to make a call on it that the interlocking N and Y are similar this interlocking A and M. To me personally, I don’t see that but I can see why they’re probably going to try to make the claim. I don’t think anybody reasonable would look at this and think it’s a play on the New York Yankees logo. But again, you know, I’m not the Yankees and again, they’re one of the most recognizable brands in the world and they’re going to make sure that nobody infringes on them. I think what’s also interesting to note is that the class that these guys have put it in, is class 41, so the organization of sports competitions, sports camps and sports training services. So, I mean, you’re using the name of a sports team, I mean, I know Athletics is kind of a broad word, but think a lot of people recognize that it belongs to the Oakland A’s. So we’ve got that, they oppose the Athletics Mercado, I’m going to toggle back now to the application we started with. So this one, kind of the old school logo that the Yankees used to use and it looks like they’re probably going to be using again. And what we also noticed is there’s a non final office action that has been that has been issued. So we’re gonna toggle over to the documents really quick and you’re going to look at this office action outgoing, and essentially, an office action outgoing letter, it is a notice where the USPTO has said, why somebody has, given an office action and this one, they’re saying that there’s a prior filed application that means somebody else has put in an application where there’s something conflicting, that may cause the registration of the trademark to fail. And so they cite here they cite this application number, they say it precedes the applicants filing date. It says maybe you refuse registration of the trademark Act, section two D. And then what they also include, you can go scroll to the next page and it’s going to show you that they’re saying this trademark application for this item is blocking the Yankees new application. So you’re looking at this you say who is Weed N’ Chicken? I don’t know. I think the art on here is lovely, I’m going to toggle to a colorized version of it. But you can see here somebody’s trying to trademark this mark. That clearly has the Yankees logo, right in the middle of the mark. And so again, this is where I kind of tell people, I think this is a great example of why it’s so important to retain legal counsel to do a full clearance search and to look for these issues because this is again one of the most world’s most recognized brands, and somebody else is trying to get protection on it and what I found interesting because it’s funny to me, so, you know this this application for this logo is being blocked because of Weed N’ Chicken but if you go to the Weed N’ Chicken trademark application, their application has an office action also. And that they are getting blocked right now first section, 2d, likelihood of confusion. And what are they blocked on? It’s because of the New York Yankees logo. And so the Yankees, who own the trademark for this logo, this registration is blocking the registration of the Weed N’ Chicken trademark application, which is also blocking the trademark of that. So I really feel bad for the Yankees in this case, right? Because they’re just like, hey, we’re trying to protect our brand and somebody else is trying to trademark the Yankees brand and that person’s application is then blocking the Yankees subsequent application. So I like this story because it just goes to illustrate how IP in the sports world can work and how brand recognition can be so important and so pervasive. Because I really think in these two cases, the Athletics Mercado and this Weed N’ Chicken, they’re just probably using the brands because it looks like fair use, like everybody has it, everybody has interlocking N and Y logo, people knock it off all the time. It’s a counterfeit punch, I’m assuming is counterfeit glory. I don’t I don’t have the facts to back it up but I’m just presuming it is. And the same thing, there’s an interlocking A and Y on that Athletics Mercado, A&M, I mean, it’s just so so so standard, but again, these brands have to protect themselves, if they don’t protect themselves then they’re going to run into an issue of dilution and if they run into an issue of dilution, then they might be losing the protection for their brand. So hey, that’s it today. Thanks for watching. I know it was a long video but I hope you got something out of it.

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