New York Yankees Partnership and Staten Island Minor League Holdings, L.L.C.v.Leon P. Hart

Trademark Trial and Appeal Board

Aug 10, 2005

No. 91156780 (T.T.A.B. Aug. 10, 2005)

Mailed:
10 August 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

New York Yankees Partnership and Staten Island Minor League
Holdings, L.L.C.
v.
Leon P. Hart.
_____

Opposition No. 91156780
to application Serial No. 76288971

_____

Richard S. Mandel of Cowan, Liebowitz & Latman, P.C. for New
York Yankees Partnership and Staten Island Minor League
Holdings, L.L.C.

Seth Natter of Natter & Natter for Leon P. Hart.
______

Before Quinn, Drost, and Zervas, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On July 23, 2001, Leon P. Hart (applicant) filed an
intent-to-use application to register the mark BABY BOMBERS
in standard character form on the Principal Register for
“clothing and athletic wear, namely, shirts, shorts, pants
and hats” in Class 25.
On June 11, 2003, New York Yankees Partnership and
Staten Island Minor League Holdings, L.L.C. (opposers) filed
a notice of opposition to the registration of applicant’s
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opposition No. 91156780
2
mark on the ground that applicant’s mark is likely to cause
confusion with opposers’ registered and common law marks.
Opposers rely on Registration No. 2,595,266 for the mark
BRONX BOMBERS in standard character form for “costume
jewelry pins; lapel pins” in Class 14, “figurines made of
porcelain” in Class 20, “decorative plates” in Class 21, and
“sporting goods, namely, baseball bats” in Class 28. The
registration issued July 16, 2002, and it contains a
disclaimer of the term “Bronx.” Furthermore, opposers
allege that “the NEW YORK YANKEES team has been commonly
known and referred to by the press, media, fans, and public
by the name BRONX BOMBERS, BOMBERS and BABY BOMBERS, in
addition to its names NEW YORK YANKEES and YANKEES.” Notice
of Opposition at 2. Opposers also allege that the “STATEN
ISLAND YANKEES club is a Minor League team affiliated with
the NEW YORK YANKEES club. In recognition of the
relationship with the renowned NEW YORK YANKEES, the STATEN
ISLAND YANKEES club has been known as and has adopted the
name BABY BOMBERS.” Id.
Applicant has denied the salient allegations of the
notice of opposition.1

1 Opposers subsequently amended their notice of opposition to add
an additional ground that applicant did not have a bona fide
intent to use the mark in commerce. Because of our disposition
of the likelihood of confusion issue, we do not need to reach
this other ground for opposition. We add that this application
has also been opposed by a third party in Opposition No.
91156641. Judgment by default was recently granted against
applicant in that case.
Opposition No. 91156780
3
The Record
The record consists of the pleadings, the file of the
involved application; opposers’ testimony deposition of Josh
Getzler, Chief Operating Officer of Staten Island Minor
League Baseball, L.L.C., with exhibits; opposers’ testimony
deposition of Howard Smith, the head of licensing for Major
League Baseball Properties, Inc., with exhibits; opposers’
stipulated testimony of Colin Hagen, Vice President of Major
League Baseball Properties, Inc., with exhibits; portions of
applicant’s discovery deposition filed by opposers’ notice
of reliance; applicant’s testimony deposition with exhibits;
and several notices of reliance by opposers and applicant on
articles and trademark applications and registrations.
Priority
An opposer must have “a ‘real interest’ in the outcome
of a proceeding in order to have standing.” Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir.
1999). “To establish a reasonable basis for a belief that
one is damaged by the registration sought to be cancelled, a
petition may assert a likelihood of confusion which is not
wholly without merit.” Lipton Industries v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).2

2 Because of the linguistic and functional similarities of the
opposition and cancellation provisions of the Lanham Act, “we
construe the requirements of those two sections of the Lanham Act
consistently.” Ritchie, 50 USPQ2d at 1025 n. 2.
Opposition No. 91156780
4
Opposers have submitted status and titles copies of
Registration No. 2,595,266 for the mark BRONX BOMBERS. This
registration establishes opposers’ standing and their
priority. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000); King Candy Co. v.
Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974).
Opposers have also submitted evidence that they have
used the mark BABY BOMBERS in association with the Staten
Island Yankees minor league team and that the New York
Yankees have been referred to as the “Baby Bombers.” To
determine if opposers have priority for their common law
rights in the term “Baby Bombers,” we look at opposers’ and
applicant’s priority dates. Applicant has not submitted any
evidence on the subject of its priority so it can rely on
the filing date of its intent-to-use application (July 23,
2001) as its priority date. Zirco Corp. v. American
Telephone and Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB
1991). Opposers have submitted evidence that they have used
the term “Baby Bombers” to refer to their minor league team
and that the term has been used by the press to refer to
both the minor league team and the New York Yankees. See
Opposer’s Third Notice of Reliance, e.g., New York Post,
July 19, 1990 (“‘They’re going out and playing hard, and I
think that is contagious,’ Merrill said of the baby
Opposition No. 91156780
5
Bombers”); Bergen Record, August 12, 1990 (“Baby Bombers in
Lost Season”); Newsday, August 20, 1990 (“The so-called
kids, who aren’t all that young, were similarly pleased.
And it was appropriate on a day when the Yankees passed out
posters of the ‘Baby Bombers’”) and Getzler Ex. 12, 0001-
0002 (“The Baby Bomber Bulletin – The Official Newsletter of
the Staten Island Yankees” 1999); Ex. 13, 0008 (“The Baby
Bomber Bulletin” 2000 – “This newsletter allows Baby Bomber
fans to keep up with the SI Yanks”).
The evidence of record, of which the few examples above
are just a small sample, shows that opposers have used the
term BABY BOMBERS and the term has been associated with
opposers, prior to applicant’s priority date. National
Cable Television Association v. American Cinema Editors
Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1428 (Fed. Cir. 1991)
(“Moreover, even without use directly by the claimant of the
rights, the courts and the Board generally have recognized
that abbreviations and nicknames of trademarks or names used
only by the public give rise to protectable rights in the
owners of the trade name or mark which the public
modified”).
However, we also note that to establish priority, a
party must demonstrate that its mark is distinctive.
Under the rule of Otto Roth, a party opposing
registration of a trademark due to a likelihood of
confusion with his own unregistered term cannot prevail
unless he shows that his term is distinctive of his
Opposition No. 91156780
6
goods, whether inherently or through the acquisition of
secondary meaning or through “whatever other type of
use may have developed a trade identity.” Otto Roth &
Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ
40, 43 (CCPA 1981).

Towers v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d
1039, 1041 (Fed. Cir. 1990) (full citation added).
We will discuss the question of whether the term BABY
BOMBERS is distinctive in the final section of the opinion.
Likelihood of Confusion
We now address whether the mark BABY BOMBERS for
clothing and athletic wear, namely, shirts, shorts, pants
and hats is confusingly similar to opposers’ identical mark
when used in association with opposers’ entertainment
services involving baseball games.3
In likelihood of confusion cases (Section 2(d)), we
analyze the facts as they relate to the relevant factors set
out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000).
The first factor we consider is the similarity or
dissimilarity of the marks. Applicant seeks registration
for the mark BABY BOMBERS and opposers use the identical

3 We will concentrate on the identical marks BABY BOMBERS and
discuss opposers’ BRONX BOMBERS mark in the context of the BABY
BOMBERS mark.
Opposition No. 91156780
7
mark in association with the minor league team known as the
Staten Island Yankees. Clearly, the marks are identical in
sound and appearance.
Regarding the meaning and commercial impression of the
marks, we start by noting that the evidence shows that the
term BABY BOMBERS is associated with the mark BRONX BOMBERS.
Besides the registration for that term (No. 2,595,266),
opposers have submitted evidence that the term BRONX BOMBERS
has acquired significant recognition and renown as a term
that refers to the New York Yankees. Opposers’ witness from
Major League Baseball Properties, Inc. (Colin Hagin)
testified (p. 2) as follows:
The NEW YORK YANKEES club is one of the most successful
sports franchises in the history of the United States,
having made thirty-nine appearances in WORLD SERIES
championship games and won twenty-six WORLD SERIES
titles. Many of the greatest and most famous MAJOR
LEAGUE BASEBALL players are known for their
accomplishments while members of the NEW YORK YANKEES
club, including such members of the national Baseball
Hall of Fame as Babe Ruth, Lou Gehrig, Phil Rizzuto,
Joe DiMaggio, Reggie Jackson, Yogi Berra and Mickey
Mantle. Since 1990, approximately 30 million people
have attended YANKEES games played at other stadiums.
In addition to its sports entertainment services, the
NEW YORK YANKEES club is now and long has been widely
known in the United States for its wide variety of
merchandise, including, but not limited to, shirts,
caps and other apparel.

In addition to being known as the New York Yankees and
the Yankees, the “team has been commonly known and referred
to by the press, media, fans and public by the nickname
BRONX BOMBERS.” Hagen stipulated dep. at 2. The witness
Opposition No. 91156780
8
identified an entry from The New Dickson Baseball Dictionary
(1999) that defined the term Bronx Bombers as: “A nickname
for the New York Yankees that first became popular in the
1930s when heavyweight boxing champion Joe Lewis was known
as the Brown Bomber. The term connotes a team that hits
many home runs and is still in common use when referring to
the Yankees.” A sample of the evidence supporting the
argument that BRONX BOMBERS refers to the New York Yankees
includes: Sporting News, October 1, 1936 (Article about the
1936 World Series referring to the Yankees as the Bronx
Bombers); Sporting News, September 19, 1964 (“This was far
below 1962, when L.A. finished fourth and the Bronx Bombers
attracted 412,312 of the Angels total attendance of
1,144,063”); Washington Post, March 12, 1978 (“If the Bronx
Bombers don’t watch out, they will become as sane and dull
as their drably brilliant forebearers”); Newsweek, January
23, 1978 (“Joseph V. McCarthy, 90, the crusty manager who
led the New York Yankees to triumph in seven World Series…
During his fifteen years in the Yankee dugout, ‘Marse Joe’
piloted the Bronx Bombers to eight pennants”); New York
Times, August 15, 1988 (“The Yankees – the Bronx Bombers –
may move to New Jersey one day, after all”); Atlanta Journal
and Constitution, December 29, 2000 (“On the night the New
York Yankees won the World Series, a hacker got into the
Yankees’ Web site and printed a derogatory remark about the
Opposition No. 91156780
9
Bronx Bombers; the site froze like that for hours”).
Mr. Hagin also submitted numerous examples of the use of
Bronx Bombers in association with various New York Yankees
merchandise. See Hagin Exhibits 2-11.
The Staten Island Yankees commenced operations in 1999.
Getzler dep. at 12. The witness (p. 14) indicated that
“Baby Bombers” is a nickname for the Staten Island Yankees.
Furthermore, the witness explained (p. 15) that the “New
York Yankees are the Bronx Bombers. That’s their – one of
their nicknames, and it is an associative term between the
major league club and the minor league club, and, you know,
it has a ring to it and its alliterative and it makes sense
that when referring to us, you know, whether it’s in a
headline or an article or, you know, our own material, that
rather than referring to us as the Staten Island Yankees,
Staten Island Yankees, Staten Island Yankees all the time,
that you create a secondary nickname and use it.”
Mr. Getzler explained (p. 16) that the name “Baby
Bombers” has been used on everything from the name of our
kids’ club to use in both public and private letters. By
public I mean letters to many thousands of people from our
mailing list. It’s been used in our program, yearbook.
It’s been used in press releases.” The Getzler exhibits
demonstrate widespread use of the term by the Staten Island
Yankees. See, e.g., Getzler Exhibits 20, 0024 (Ad – “[W]e
Opposition No. 91156780
10
urge you to take mass transit when you come out to see the
Baby Bombers”); 24 (Radio Spot – “Opening night is June 20
[2000] at 7 PM against the Vermont Expos, and tickets … are
on sale at the Baby Bombers’ offices”); 30 (September 13,
1999 Letter to Season Ticket Holders – “From Opening Night
festivities … to the Baby Bombers’ mid-August run toward the
playoffs”); 32 (2000 Program – “The Baby Bombers’ staff
hopes you’ll find it to be a comfortable, convenient, and
friendly place to watch the major leaguers of tomorrow”).
Indeed, Mr. Getzler testified that they even considered the
name Baby Bombers as the official name of the minor league
team. The term (pp. 14-15) was “on the short list of names
that we had thought of for the team, so we had thought of
the term ‘Baby Bombers’ initially, but even without us doing
anything publicly about it, the press took the term ‘Baby
Bombers’ and started using it as well.”
We add that Mr. Getzler’s testimony regarding the use
by the press of the name “Baby Bombers” to refer to the
Staten Island Yankees team is supported by numerous articles
that have been made a record. A sample of these articles
follows: New York Post dated July 16, 1999 (Baby Bomber’
Righty Growing Up Fast – While the Single-A State Island
Yankees were struggling…”); New York Post dated August 6,
1999 (“MTV troublemaker Tom Green was abruptly unplugged at
a Staten Island Yankees game the other night, after he
Opposition No. 91156780
11
harassed the Baby Bombers…”); Daily News (New York), June
21, 2000 (“The Baby Bombers - Don’t tell Staten Island its
team is minor league”); Bergen Record dated August 13, 2000
(“The Yankees have shipped first baseman Jeff Leaumont … to
Staten Island to add punch to the Baby Bombers lineup”);
Village Voice dated October 3, 2000 (“When the Staten Island
Yankees move into their new waterfront digs next year,
perhaps the Baby Bombers will be able to compete with the
closeness and minor-league atmosphere of the Long Island
Ducks”); and Daily News (New York), May 15, 2001 (“The New
York-Penn League Champion Baby Bombers will open their new
$79 million, publicly funded ballpark”).
The evidence convinces us that the meaning and the
commercial impression of applicant’s and opposers’ term BABY
BOMBERS would also be identical to the extent that the mark,
when used with a minor league baseball team and on athletic
clothing including hats and shirts, suggests an association
with the New York Yankees, who are also known as the Bronx
Bombers.
When both parties are using or intend to use the
identical designation, “the relationship between the goods
on which the parties use their marks need not be as great or
as close as in the situation where the marks are not
identical or strikingly similar.” Amcor, Inc. v. Amcor
Industries, Inc., 210 USPQ 70, 78 (TTAB 1981). The Federal
Opposition No. 91156780
12
Circuit has noted that “[w]ithout doubt the word portions of
the two marks are identical, have the same connotation, and
give the same commercial impression. The identity of
words, connotation, and commercial impression weighs heavily
against the applicant.” In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687, 1688 (Fed. Cir. 1993). Here, the identical
nature of the marks is a factor that strongly supports
opposers’ position.
Next, we consider whether applicant’s goods and
opposers’ services are related. Applicant’s goods are
clothing and athletic wear, namely, shirts, shorts, pants
and hats. We must consider the goods as they are identified
in the identification of goods in the application. Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods”). We do not
read limitations into the identification of goods and
clearly applicant’s athletic wear including hats and shirts
would include baseball hats and shirts. Opposers’ services
include entertainment services in the nature of baseball
games. Furthermore, opposers have used the name of their
minor league team on various clothing items. Getzler dep.
at 78 (“we have accepted licenses for different garments
that contain our name”); Getzler Ex. 31 (Staten Island
Opposition No. 91156780
13
Yankee Merchandise: Get your Baby Bomber gear now at our
on-site Team Shop, or on line at www.siyanks.com. The Team
Shop offers a full line of Staten Island Yankees caps,
apparel, accessories, and more! New items are added all the
time, so stop by or log on”). While the witness indicated
(pp. 78-79) that it had not used the mark Baby Bombers
itself on these goods, it is clear that it is the source of
clothing including caps and apparel and that it has used the
mark BABY BOMBERS in association with its baseball services
and the sale of apparel.
“In order to find that there is a likelihood of
confusion, it is not necessary that the goods or services on
or in connection with which the marks are used be identical
or even competitive. It is enough if there is a
relationship between them such that persons encountering
them under their respective marks are likely to assume that
they originate at the same source or that there is some
association between their sources.” McDonald's Corp. v.
McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989). See also In re
Opus One Inc., 60 USPQ2d 1812, 1814-15 (TTAB 2001). Here,
inasmuch as opposers are the source of various clothing
items and that it is also the source of baseball services
and that applicant intends to use the mark on athletic
clothing including hats and shirts, consumers are likely to
assume that there is some association between the source of
Opposition No. 91156780
14
these goods and services. Therefore, applicant’s and
opposers’ goods and services are related.
Some of the other factors we consider are the channels
of trade and prospective purchasers. Here, we have evidence
that patrons of baseball games would also expect that the
team would sell apparel associated with the team. Indeed,
patrons at opposers’ baseball games would see that opposers
are the source of goods that overlap with applicant’s goods
(“The Team Shop offers a full line of Staten Island Yankees
caps, apparel, accessories, and more”). Customers of
baseball services and athletic hats and shirts would at
least overlap and they would likely also be exposed to the
sale of hats and shirts, as general consumer items in other
channels of trade. In addition, neither the prospective
purchasers of these goods and services would be
sophisticated or careful purchasers. Therefore, these
factors do not eliminate or even diminish the likelihood of
confusion and these factors favor opposers.
In response to opposers’ position concerning the
likelihood of confusion, applicant maintains (p. 10) that
its mark “Baby Bombers is nondistinctive… In sports
vernacular, ‘Baby Bombers’ is descriptive of a minor league
or rookie team having potential for explosive play, such as
slugging or home run hitting.” Applicant points out and
opposers’ witness (Getzler dep. at 61) has acknowledged that
Opposition No. 91156780
15
another minor league is known as the Capital City Bombers.
Applicant also argues that others have adopted the word
Bombers and registered the mark for clothing. Applicant
seems to be arguing that opposers’ BABY BOMBERS mark is
descriptive of a sports team and that it is also a weak
mark. We will address both points.
A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics
of the goods or services or if it conveys information
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 217 (CCPA 1978). See also In re Nett
Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001); In re MBNA America Bank N.A., 340 F.3d 1328, 67
USPQ2d 1778, 1780 (Fed. Cir. 2003) (A “mark is merely
descriptive if the ultimate consumers immediately
associate it with a quality or characteristic of the
product or service”). We look at the mark in relation to
the goods or services, and not in the abstract, when we
consider whether the mark is descriptive. Abcor, 200 USPQ
at 218.
In this case, the evidence does not show that potential
patrons of opposers’ services will immediately associate the
term BABY BOMBERS with a quality or characteristic of
opposers’ services. First, the fact that another sports
Opposition No. 91156780
16
team has adopted the word “Bombers” as part of its team name
hardly establishes that the term is descriptive. Indeed,
the opposite is just as likely to be true, i.e., that the
term was chosen to serve a trademark function as in the term
NEW YORK YANKEES for a New York baseball team known as the
Yankees.
Second, we note that the record clearly establishes
that the term Bronx Bombers is a term that refers to the New
York Yankees. Indeed, even the evidence about a Little
League team occasionally referred to as the “Baby Bronx
Bombers” in some press articles only appears to reinforce
the connection with the New York Yankees, who also play in
the Bronx, as opposed to demonstrating that the mark is
descriptive. When a sporting goods retailer applied to
register the term BABY BRONX BOMBERS, opposers’ witness
personally called the retailer and objected to this
application. Smith dep. at 10-11. The record does not
indicate that the term ever registered.
Third, the evidence shows that the term “Baby Bombers”
has been overwhelmingly used to refer to either opposers’
Staten Island Yankees or New York Yankee teams or players.
This evidence that the term identifies a specific Major
League team and/or its minor league affiliate contradicts
applicant’s argument that the term describes any rookie or
minor league team associated with explosive play.
Opposition No. 91156780
17
Therefore, we conclude that opposers’ BABY BOMBERS mark
is not descriptive. Furthermore, because we hold that the
term is inherently distinctive, opposers clearly have
priority for use of the term for baseball services as
indicated earlier.
Regarding applicant’s suggestion that other
registrations indicate that opposers’ mark BABY BOMBERS is
weak, it is clear that none of the evidence is for the term
BABY BOMBERS. Furthermore, “[t]he probative value of third-
party trademarks depends entirely upon their usage. E.g.,
Scarves by Vera, Inc. v. Todo Imports, Ltd., 544 F.2d 1167,
1173 (2d Cir. 1976) (‘The significance of third-party
trademarks depends wholly upon their usage. Defendant
introduced no evidence that these trademarks were actually
used by third parties, that they were well promoted or that
they were recognized by consumers’).” Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005). Similarly
in this case, the evidence does not show that there is
widespread use and recognition of the term “Bombers” to
refer to third parties. Thus, the evidence does not
indicate that opposers’ mark BABY BOMBERS is entitled to a
narrow scope of protection.
Therefore, we conclude that opposers have priority and
if applicant’s mark BABY BOMBERS were used on the identified
Opposition No. 91156780
18
goods, there would be likelihood of confusion inasmuch as
opposers use the identical mark on baseball entertainment
services.
Decision: The opposition to the registration of
application No. 76288971 is sustained.