In a recent August ruling, the United States Trademark Trial and Appeal Board (TTAB) sustained the New York Yankees Partnership’s opposition to Matthew Kirschbaum’s application to register the mark DANKEES for apparel and headwear. In New York Yankees P’ship v. Kirschbaum, Opposition No. 91284783 (TTAB Aug. 1, 2025),[1] the Board highlighted the enduring strength of famous sports marks and clarified cultural and procedural considerations in likelihood of confusion disputes.
Facts
Kirschbaum sought registration on the Principal Register for the work mark DANKEES, covering items including t-shirts, hoodies, hats, socks, sweatpants, and beanies. The intent-to-use application was filed on March 23, 2022, and published in the Official Gazette on January 3, 2023, prompting opposition by the New York Yankees Partnership on May 3, 2023.[2] The Yankees opposed the application on two grounds. First, they claimed likelihood of confusion under Section 2(d) of the Lanham Act, arguing that DANKEES was confusingly similar to their long-established YANKEES marks. Second, they alleged dilution by blurring under Section 43(c) of the Lanham Act, asserting that DANKEES would weaken the distinctive quality of the YANKEES marks.
To support these claims, the Yankees relied on ownership of numerous registrations for YANKEES and YANKEES-composite marks across multiple international classes, as well as decades of continuous use in connection with baseball games, exhibitions, and a wide range of merchandise, including apparel and headwear. Since 1913, the team has used and promoted its marks nationwide across a wide range of products and services. Over the decades, tens of millions of consumers have watched Yankees games or purchased merchandise bearing the marks. The Club’s website also drew substantial traffic between 2012 and 2023.[3] With hundreds of millions of consumers exposed and merchandise sales exceeding $100 million over the past decade, the brand’s recognition long predates 2022 when Kirschbaum attempted to enter the market.[4]
The Evidentiary Record and Priority
The Yankees submitted witness declarations, merchandising exhibits, and notices of reliance on Kirschbaum’s discovery responses. Kirschbaum, by contrast, offered no testimony or documentary evidence in his defense. Yet, the Yankees’ reliance on pleaded registrations was rejected by the TTAB because the submissions consisted of plain photocopies, rather than official USPTO printouts demonstrating valid registration status. Simply submitting photocopies or relying on witness testimony about ownership does not make registrations “of record.” This underscores the importance of properly authenticated evidence to establish priority through active, registered marks.[5]
Nevertheless, extensive common law use of the YANKEES marks established both priority and entitlement to oppose. To oppose a mark under Section 2(d), a party must show a real interest in the proceeding and a reasonable belief that registration may cause damage. The Yankees satisfied this requirement with evidence of extensive commercial use over more than a century. Priority can be based on prior registration or prior common law use. In this case, while registrations were improperly submitted, common law rights were clearly established through decades-long merchandising, licensing, and sales. Kirschbaum’s acknowledgment of the Yankees’ prior use in connection with apparel and baseball events further reinforced the opposition’s priority.[6]
Likelihood of Confusion Analysis
The TTAB then applied the DuPont factors to find that the factors weighed in favor of the Yankees:[7]
1) Similarity of the Marks – The Yankees argued that DANKEES and YANKEES are visually and phonetically very similar, differing by only a single letter. Both marks share six letters, rhyme, and produce nearly identical sounds. Kirschbaum countered that the marks are distinct because he invented the term independently, without consulting reference materials or considering Opposer’s marks. He also emphasized that DANKEES has no inherent or recognized meaning outside of his branding. A deliberate creation of a wholly original term renders the mark fanciful or inherently distinctive, entitled to the highest level of protection.[8] He also highlighted that the “D” at the beginning distinguishes it from the “Y” and that consumers tend to focus on the first letter or syllable.[9] The TTAB acknowledged Kirschbaum’s points but concluded that the visual and phonetic similarities favored a finding of likelihood of confusion.
2) Similarity of the Goods – Both parties’ goods include apparel and headwear, such as t-shirts, hoodies, and hats. The Yankees argued that this complete overlap strongly favors confusion because the products would be sold in identical or similar retail contexts. Kirschbaum emphasized his limited sales, primarily sample items at a pop-up events in Manhattan, meant there was no real similarity of goods.[10] The TTAB, however, treated the overlap of listed goods as heavily favoring the Yankees, noting that identical goods sold under similar marks in a similar geographic location increases the likelihood that consumers would assume a connection.
3) Channels of Trade and Classes of Consumers – The Yankees emphasized that their goods are sold widely, including team stores, online platforms, and third-party retailers, meaning the same channels would also be accessible for DANKEES products. Kirschbaum argued that his online and potential retail sales were minimal, making actual consumer overlap unlikely. The Board noted that the unrestricted nature of Kirschbaum’s goods coverage presumes overlap in trade channels and purchasers. Also, consumers of inexpensive apparel are prone to impulse purchases, which favors a likelihood of confusion finding.
4) Strength and Fame of the Senior Mark – YANKEES is an inherently distinctive and famous mark, with over a century of continuous use, global recognition, and extensive merchandising. The Yankees argued that the fame of their mark extends protection beyond baseball into apparel and related products. Kirschbaum argued that DANKEES was unrelated to baseball, claiming cannabis consumers would associate the name with “dank” marijuana rather than the baseball team.[11] The TTAB concluded that the fame of YANKEES weighed strongly in favor of confusion.
5) Evidence of Actual Confusion – Kirschbaum highlighted the absence of any actual consumer confusion from the limited sales of DANKEES merchandise. However, the Yankees stated that absence of actual confusion is not dispositive. The TTAB treated this factor as neutral, emphasizing that likelihood of confusion is assessed prospectively.
6) Good Faith and Intent – Kirschbaum argued he acted in good faith, explaining that DANKEES was conceived independently, received prior USPTO examiner approval, and was tied to marijuana culture rather than baseball. He denied any attempt to trade on the Yankees’ reputation. The Yankees argued consumer perception, not intent, drives confusion, citing prior third-party uses of DANKEES linked to marijuana-themed apparel which reenforces potential misassociation. The TTAB acknowledged Kirschbaum’s good faith as a neutral factor.
Considering all DuPont factors, the TTAB found the parties’ goods, trade channels, and consumers overlap, and impulse purchases increase the likelihood of confusion. The commercial strength and fame of the YANKEES mark outweigh minor differences in appearance or meaning. As a result, the TTAB sustained the Yankees’ opposition to DANKEES.[12]
Dilution Considerations
Although the Yankees also alleged dilution by blurring, the TTAB’s decision rested primarily on a Section 2(d) likelihood of confusion analysis. The fame of the Yankees’ marks could have supported a dilution claim, and the connotation of DANKEES may have actually heighten that risk. The “D” in DANKEES evokes the slang term “dank,” commonly associated with high-quality marijuana, which could intersect with MLB’s existing CBD partnerships. MLB Clubs have sponsored other Cannabidiol (“CBD”) companies. For example, Charlotte’s Web was named the “Official CBD of Major League Baseball” in 2022. These sponsorships promote the YANKEES marks across industries and generate revenue.[13]
The risk of dilution is thus not hypothetical. The Yankees, through MLB, have consistently protected their marks, successfully opposing similar registrations such as VANKEE, YAYKEES, STANKEES, and BANKEE STADIUM. Recently, they stopped five third parties from selling DANKEES merchandise, the same mark Kirschbaum now seeks to register.[14] Kirschbaum apparently did not search for existing trademarks before adopting his mark. Had he done so, he would have seen prior third-party uses of DANKEES, including others Instagram posts featuring this wordmark with pinstripes and Yankees logos. Since multiple third parties have marketed DANKEES merchandise in this manner, consumers are likely to perceive the mark as a play on YANKEES.
The Yankees’ brand extensions illustrate how terms ending in “-ANKEE” or “-ANKEES” trigger immediate association with the team. For example, the YANKEE HANKEE rally towel, sold at games and promoted in team marketing, plays on the Yankees name while creating a distinctive branded product that fans instantly recognize.[15] DANKEES mirrors this linguistic pattern and has already been exploited by third parties. Given this history, the TTAB reasonably concluded that consumers encountering Kirschbaum’s mark are likely to assume affiliation, endorsement, or sponsorship by the Yankees.
Conclusion and Implications for Trademark Practitioners
This case is a textbook reminder of the expansive protection afforded to famous marks. The TTAB’s decision shows that even playful or slang-based variations are unlikely to survive opposition when a brand is highly distinctive and well-known. For trademark practitioners, the case reinforces three central points. First, fame magnifies risk because minor differences in sound, spelling, or connotation rarely prevent a likelihood of confusion. Second, procedural precision matters since pleaded registrations must be supported with proper authenticated USPTO evidence, not informal photocopies, or they risk being excluded. Common law rights remain powerful because extensive commercial use, licensing, and merchandising can establish priority even without registration. Third, consistent enforcement preserves strength as demonstrated by the Yankees’ history of policing marijuana-themed DANKEES uses, which helped secure their strikeout.
Katelyn Kohler is a graduate of Suffolk University Law School in Boston, specializing in Sports & Entertainment, Intellectual Property, and Labor & Employment Law. She holds dual degrees from Ithaca College in Business Administration: Sports Management and Legal Studies.
[1] New York Yankees P’ship v. Kirschbaum, 2025 TTAB LEXIS 340
[2] DANKEES, Serial No. 97327195
[3] See Plaintiff’s Trial Brief, New York Yankees P’ship v. Kirschbaum, Opposition No. 91284783, at 1 (T.T.A.B. Apr. 23, 2025) (public redacted version).
[4] See id. (nothing common law history of Yankees mark).
[5] See New York Yankees P’ship v. Kirschbaum, 2025 TTAB LEXIS 340, *1-8
[6] See id. at *14-15. The applicant acknowledged that the Yankees’ YANKEES marks predated his DANKEES application and that he was aware of their prior use on baseball games, t-shirts, and hats. Id.
[7] See New York Yankees P’ship v. Kirschbaum, 2025 TTAB LEXIS 340, *42-43; see also In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (setting forth factors to be considered, referred to as “DuPont factors”).
[8] See FCOA LLC v. Foremost Title, 57 F.4th 939, 949 (11th Cir. 2023); The Law of Associations § 16A.04 (2025) (“Xourts determine this potential by placing a mark on the sliding scale of trademark strength, from weakest to strongest: (1) generic, (2) descriptive, (3) suggestive, and (4) fanciful or arbitrary.”).
[9] See Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”).
[10] See New York Yankees P’ship v. Kirschbaum, 2025 TTAB LEXIS 340, *37 (explaining Applicant’s selling habits).
[11] See Applicant’s Trial Brief, New York Yankees P’ship v. Kirschbaum, Proceeding No. 91284783, at 10 (T.T.A.B. May 23, 2025). Kirschbaum explains that the “D” at the start of his mark leads consumers to think of the slang term “dank”, which generally means “cool” or “high quality” for marijuana users. Id.
[12] See New York Yankees P’ship v. Kirschbaum, 2025 TTAB LEXIS 340, *42-43 (concluding in favor of opposition).
[13] See Plaintiff’s Trial Brief, New York Yankees P’ship v. Kirschbaum, Opposition No. 91284783, at 11 (T.T.A.B. Apr. 23, 2025) (evidencing Major League Baseball clubs’ CBD sponsorships, marketing expenditures, and promotion of YANKEES marks across multiple platforms).
[14] See id. at 16-19 (discussing efforts stopping third parties from selling merchandise using “DANKEES” and other similar marks).
[15] See id. at 36 (showing expansiveness of the Yankees’ trademarks including wordplay on YANKEES).
