Rumble in the Bronx

Susan Scafidi takes note of a story that the Yankees logo has been showing up on on caps decorated with gang colors. No big deal, right? Well, these caps were official MLB merch! The caps have been pulled, but my attention was caught by the following statement in the Yankees’ press release on the caps.

The New York Yankees were completely unaware that caps with gang-related logos and colors had been manufactured with the New York Yankees logo on them. These caps were made under a licensing agreement between New Era and Major League Baseball and were not subject to the Yankees’ approval nor shown to the New York Yankees at any point prior to their retail distribution.

Dude, from a trademark-control point of view, you do not make statements like this. As a matter of healthy practice, licensing agreements for trademarked goods need to ensure that you retain control over the goods on which the mark appears. If you just give your mark away for someone to use entirely as they see fit, such “naked licensing” can call into question your ability to enforce your trademark, because you’ve just severed the connection between the trademark and your goods.

I’m highly confident that the agreement between the Yankees and Major League Baseball has quality-control provisions. But still, public claims that you don’t control how your trademark is used are the kind of thing you have to waste time and money explaining away if you get stuck in trademark litigation. I’ve seen the same thing happening with the Chinese toy recalls. It’s tempting to blame the contractor and claim there was nothing you could have done—but doing so makes you look like an incompetent mook who can’t be bothered with the little details, like keeping lead paint away from children. In the courts of law and of public opinion, think twice before you admit the laxity of your trademark control.