Two sports franchises sharing the same name isn’t unprecedented. Just ask the New York Giants and the San Francisco Giants, the Los Angeles Kings and the Sacramento Kings, the New York Jets and the Winnipeg Jets or the St. Louis Cardinals and the Arizona Cardinals.
But two in the same city? That might be pushing it too far, even if both sets of Cardinals played in St. Louis from 1960 to 1987.
At least that’s what the Cleveland Guardians, a flat-track roller derby team, argue in a federal complaint, filed on Wednesday in Ohio.
The Guardians are suing the Cleveland Indians, which intend to switch their name at the conclusion of the 2021 baseball season, for trademark infringement, misappropriation, deceptive practices and other claims. The Guardians seek a jury trial and demand, among remedies, an injunction that would block the Indians from using Guardians.
The Guardians are a non-profit, adult co-ed amateur team that competes against other roller derby teams from the U.S. and Canada. The team’s complaint, which is signed by attorney Christopher Pardo, on behalf of the law firm Hunton Andrews Kurth, says the team has used the name for more than seven years, including to distinguish itself with consumers and sell hats, t-shirts and assorted merchandise. The team had not sought to register a trademark until the Indians went public in July with their name plan.
The complaint portrays the Indians as relying on deceptive, almost clandestine moves to snag the Guardians name. It complains that instead of contacting the Guardians about their name plans, the Indians “surreptitiously” filed a trademark application for Guardians on April 8 in the tiny island nation of Mauritius. The move was likely designed to establish a priority date, which refers to the earliest trademark application filed in any country, for later use in its application to the U.S. Patent and Trademark Office. Not surprisingly, the move in Mauritius went unnoticed by American media and other observers.
It wasn’t until June 10, the Guardians say, that the Indians contacted them about a possible name change. An attorney for the Indians and Guardians principal, Gary Sweatt, then exchanged emails about the Indians’ interest in potentially acquiring the Guardians’ intellectual property. The emails included exchanges of photos of the Guardians’ merchandise, including their logo.
Sweatt became concerned that the Indians intended to use the Guardians name regardless of whether they reached a resolution. He worried people would gradually “think that his ‘Cleveland Guardians’ had stolen their name from the far-more-famous baseball team.” As the complaint retells history, Smith proposed selling his team’s IP—including the domain name, clevelandguardians.com— to the Indians and pledged to then rebrand his roller derby team. However, the Indians “offered to pay a nominal amount, likely no more than fifteen minutes of annual team revenue,” the complaint said.
Sweatt rejected that offer and counteroffered. He insists the Indians never responded to the counteroffer. On July 22, the Indians announced their name change plans and introduced a logo, which the Guardians say looks “remarkably similar” to their own.
As explained in more detail on Sportico, the Guardians roller derby team has both advantages and disadvantages under federal trademark law. Working in the team’s favor is that U.S. trademark law normally awards trademarks on a “first-to-use,” rather than “first-to-file” basis. The Guardians have a compelling argument: They used the name in associated commercial practices long before the Indians, which have not yet swapped names. On the other hand, by filing first, the Indians’ application will be reviewed first by USPTO trademark examiners. The federal registration process could take years, depending on challenges and objections.
Alexandra Roberts, a trademark law expert at UNH Franklin Pierce School of Law and author of Athlete Trademarks: Names, Nicknames, & Catchphrases, previously told Sportico that there might not be a trademark conflict. She stressed the key question is whether there is a likelihood of confusion. While both are sports teams, their sports and mode of operation (one is a pro team worth $1.375 billion, the other is an amateur team) are very different.
The roller derby team clearly believes there is confusion, and that it will only get worse. The word “confusion,” in fact, appears 16 times in the Guardians’ 20-page complaint. “[J]ust the Indians’ initial announcement (which was picked up by many media outlets),” the complaint charges, “already started causing the sorts of chaos, confusion and harm that would be expected if the two teams were to operate in the same city using identical names.”
While the two teams’ dispute over federal trademark registration will remain unresolved for a while, the Guardians contend the Indians are violating several laws. One is the federal Lanham Act, which restricts goods and services that are likely to cause consumer confusion as to their origin. The Guardians say they own common law trademark rights (which are not created through statute but rather through case precedent) in the name, in connection with a sports team in the Cleveland area, and the sale of related merchandise. The Guardians also raise several claims under Ohio law, including for trademark infringement and unfair competition. The team says the Indians are trying to “injure and misappropriate the reputation and goodwill” the Guardians have built over the years.
“The derby team’s theory in bringing the lawsuit,” Roberts told Sportico on Wednesday, “is known as reverse infringement.” She explains that in typical infringement cases, a well-known company (like the Indians) sues a new company for using a similar mark, arguing that consumers will be misled there is some association to the existing mark. Reverse infringement, in contrast, happens when the smaller brand sues the bigger and better-known one. “So the derby team’s fear here,” Roberts notes, “is that the baseball team’s use will swamp the marketplace, and anyone who encounters the CLEVELAND GUARDIANS trademark will associate it with the MLB team—the junior user—rather than the derby team, even though the derby team actually had prior rights in the mark.”
The Indians released a statement on Wednesday, expressing that they “have been and continue to be confident in our position to become the Guardians.” The statement adds, “We believe there is no conflict between the parties and their ability to operate in their respective business areas.”
The Indians will have an opportunity to answer the complaint and raise defenses. The case has been assigned to Judge James Gwin, who presides at the Carl B. Stokes U.S. Court House in Cleveland.
Roberts anticipates that the “the baseball team is going to argue that it’s perfectly possible for both to coexist without confusing anyone. After all, plenty of other teams share names—there is more than one team called the Tigers, or the Royals, or the Bears—sometimes even in the same city. While Guardians is a less common name, it’s a name that is significant to Cleveland residents, and one that references the city’s history. And roller derby and baseball may be sports with particularly distinct audiences, which matters in the likelihood of confusion analysis.”
As always with a complaint, it is merely one side’s telling of a dispute from that side’s perspective. It’s also worth noting the Guardians and Indians have held settlement talks. At any point they could strike a deal, thereby ending the litigation.
(This article has been updated with a statement from the Cleveland Indians and additional comments from Alexandra Roberts.)