The Cleveland Indians may have committed—as they say in roller derby—an “illegal procedure” while rebranding themselves as the Cleveland Guardians.
The baseball franchise, which intends to make the name swap after the season ends in October, isn’t the first sports organization in Cleveland to claim the Guardians name. A flat-track roller derby team, which has existed for nearly 10 years, has operated under the name and even runs the website clevelandguardians.com. An amateur sports enterprise open to adults aged 18 and up, the Cleveland Guardians travel outside Ohio and compete against roller derby teams from the U.S. and Canada. The team has been in existence since at least 2014, with an active social media community on Facebook.
Meanwhile, the baseball franchise, which joined Major League Baseball in 1901 and was named the Indians in 1915, filed a trademark application for “Cleveland Guardians” with the U.S. Patent and Trademark Office before the roller derby team. On July 23—the same day Larry Dolan’s team released a video narrated by Tom Hanks hailing the new, traffic-sculpture-inspired name—the Indians filed two trade applications covering numerous goods and services. The applications contemplated clothing, toys, foam novelty items, entertainment services in the context of baseball games, entertainment in the nature of live performances by costumed mascots, and other products and operations related to running an MLB team. Four days later, the roller derby team filed a trademark application for such goods as bumper stickers, jerseys, footwear, ornamental novelty pins and insulating sleeve holders for beverage cups.
The baseball team lists a priority date, which refers to the earliest trademark application filed in any country, of April 8. As trademark attorney Josh Gerben tweeted, the team filed applications for Cleveland Guardians on that date in Mauritius. The move was done to establish an earlier priority date. Also, by registering in a tiny island nation in the Indian Ocean, the Indians presumably hoped to diminish the risk of attracting notice by American media.
Mission accomplished? Not so fast.
U.S. trademark law generally awards trademarks based on “first-to-use,” rather than “first-to-file.” Proof of use ordinarily involves evidence that the mark has been used for business purposes, as opposed to being inactive and squatted on. From that lens, the roller derby team has the decisive advantage. Yet the Indians filing first does supply a tactical advantage: The application will be reviewed first by USPTO trademark examiners, who could then publish it for opposition.
If the USPTO ultimately registers Cleveland Guardians to one of the two teams, it would provide the registrant with important legal rights. They include the exclusive right to use the mark in connection with specific goods and services, a legal presumption of ownership and access to anti-counterfeit services from U.S. Customs and Border Protection. Registration isn’t the only method of obtaining trademark rights. If a mark has been used in commerce—as the roller derby team has done with Cleveland Guardians—a business can enjoy state law rights from court decisions, better known as “common law.” But federal registration would provide key benefits unobtainable through reliance on case precedent.
Alexandra Roberts, a trademark law expert at UNH Franklin Pierce School of Law and author of Athlete Trademarks: Names, Nicknames, & Catchphrases, tells Sportico that while it’s “pretty straightforward” the roller derby team enjoys superior rights in the name due to using it first, it’s not clear there is an actual trademarks conflict.
One “key question,” Roberts explains, “is whether the marks, in the context of the goods and services with which they’re used, create a likelihood of confusion.” She notes that although the roller derby team lists various products in its USPTO application, it has been using “Cleveland Guardians” in connection with sports-related entertainment services for several years. This could pose a problem with the Indians when they switch names. The ballclub, like the roller derby team, is engaged in sports-related entertainment services. Both also feature sports-related apparel.
“It’s possible,” Roberts explained, “that consumers could be misled to believe there’s some association between the two—for example, that the baseball team sponsors the derby team or that the derby team uses the MLB team’s name with permission or under a license agreement. Of course, it’s also possible a court could find no likelihood of confusion, given that one is a professional baseball team and one an amateur roller derby team—they use different logos, appeal to different audiences, and advertise in different channels.”
Roberts, a former intellectual property litigator at Ropes & Gray in New York City and Boston after studying IP law at Yale Law School, finds it “surprising” that the Indians “let things get so far out of hand.”
“I would have expected that when their legal counsel vetted the name—surely one on a long list of options—they conducted an extensive search of registered and unregistered trademarks, flagged the existence of the derby team, and counseled the baseball team’s ownership to negotiate in advance rather than announce its selection of a name that wasn’t fully available. (In fact, there was another pending application to register CLEVELAND GUARDIANS by a third party that the baseball team made sure was formally abandoned before it went public with its choice of name.) It seems particularly likely the baseball team knew about the derby team given the latter’s ownership of the domain name clevelandguardians.com. Maybe the baseball team chose to take the risk; maybe negotiations went off the rails, and the roller derby team applied to register the mark to send a message about its refusal to back down.”
Are the Guardians and would-be Guardians headed to court? Roberts is skeptical this dispute will play out that way. She noted the roller derby team is unlikely to have the financial resources to see a federal lawsuit all the way through, though a dispute before the Trademark Trial and Appeal Board—”a logical next step given the pending applications”—is faster and less expensive. Roberts suspects the two teams could reach a consent agreement as a form of compromise. The agreement would detail how each could use the mark to avoid confusion.
Yet Roberts said the Indians have placed themselves in a difficult spot where they likely can’t walk away from the Guardians. The roller derby team is poised to be the financial beneficiary of the Indians’ entrenched position.
“After the baseball team’s triumphant announcement, narrated by none other than Tom Hanks, I doubt it would risk losing its new name and going back to the drawing board yet again,” Roberts said. “The trademark—and probably also the domain name—are worth too much to the baseball team at this point not to simply pay for them, whatever the price.”