Here Comes The Judge… And Only The Judge: Time to Collect Royalties from Licensing
Opposing Judge was Michael P. Chisena, a Long Island resident who claimed to have little interest in professional sports, let alone major league baseball or specifically Judge. On July 14, 2017, Chisena filed two trademark applications for the standard character marks of “ALL RISE” and “HERE COMES THE JUDGE.” Ironically, Chisena requested his attorney investigate whether the phrases “All Rise” and “Here Comes The Judge” were trademarked on the very same day that Judge won the 2017 Home Run Derby. Four days later, Chisena filed the trademark applications.
Chisena claimed that the timing was merely coincidental and, again, that he is not even a baseball fan. Chisena also alleged that he came up with these trademarks years before he became aware of Judge. Chisena argued that since “All Rise” and “Here Comes The Judge” had been well-known within court settings long before the launch of Judge’s professional baseball career, Judge could not claim ownership of them.
However, prior to Chisena’s filings, the slogans were already being used by Judge on social media and on clothing by MLBPA-sanctioned licensed sellers. Chisena claimed further that he was unaware the phrases for which he filed trademarks were already being used in connection with Judge, as noted above.
Findings for The Judge
The Trademark Trial and Appeal Board (TTAB), in a 61-page opinion, found by a preponderance of evidence that Judge established priority over Chisena with respect to the previously mentioned slogans, and that such slogans should belong to Judge because most individuals will associate the phrases with him. Accordingly, the TTAB held that fans “would recognize, associate, and perceive” the slogans as identifying Judge or his agents (e.g., MLBPA), as the one sponsoring or authorizing the merchandise.
The TTAB even suggested that Chisena could be a bad actor. Such suggestions were not unwarranted, given that Chisena previously filed for sports-themed trademarks, including one similar to that of the New York Islanders (i.e., for the “Brooklyn New York Metros” during the time the Islanders played in Brooklyn). Similarly, in the Islanders example, Chisena later claimed that the idea for the symbols came to him after attending youth hockey games. Therefore, it is not surprising that the TTAB called the timing of Chisena’s trademark filings for “All Rise” and “Here Comes The Judge” “eyebrow-raising,” stating that his “protestations of good faith strain credulity.” In addition to the questionable timing, Chisena made a follow-up filing the day after the Yankees won their first playoff series in 2017 against the Cleveland Indians.
This TTAB opinion has both precedential value and also reinforces TTAB’s crackdown on bad faith trademark filings from applicants who are attempting to profit from unmistakable references to or the name and likeness of another. Following the TTAB opinion, Judge is now free to license and exploit the trademarks going forward.
Our team will be monitoring actions similar to Judge’s as they unfold. Please feel free to contact your ArentFox Schiff LLP attorney or one of the authors with any questions or concerns.
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