The Cleveland Guardians roller derby team responded to the Cleveland Indians’ decision to re-brand itself the Guardians not with public comment but with a trademark application.
The trademark filing indicates the Guardians Roller Derby nonprofit corporation seeks to register “Cleveland Guardians” for clothes, novelty pins, bumper stickers, and can cozies.
The July 27 filing came four days after the Cleveland Indians filed their trademark application to cover merchandise and baseball entertainment services.
But trademark rights derive from first use, not first registration.
The filing appears designed to set the stage for a conflict over the mark between the sports entities. Filings typically take roughly a week to appear on the Patent and Trademark Office’s website.
The roller derby team isn’t “going away and they shouldn’t go away,” trademark attorney Jayne Durden of IP management company Anaqua Inc. said. “They obviously realize it’s a big issue and took action, and aren’t messing around.”
The roller derby team could argue they used the trademark first in a bid to block the Major League Baseball team from using their mark or convince it to sell the rights. It hadn’t registered any trademarks, though it registered Cleveland Guardians as a trade name with the state of Ohio in 2017 and has had an online presence since at least 2011.
The MLB team could counter in litigation either that consumers wouldn’t be confused by the two entities or that the roller derby team didn’t have prior rights for one of various reasons.
The applications are processed by trademark examiners, who will check for compliance and search for existing marks that conflict. Once cleared, an applied-for mark is published, opening the door for challengers to oppose registration before the Trademark Trial and Appeal Board.
Even though the roller derby team claims an earlier first use, examiners must address conflicting applications based on who filed first, trademark attorney Marsha Gentner of Dykema Gossett PLLC said. Examiners would evaluate the baseball team’s application and suspend the roller derby team’s.
“The roller derby team could wait until it’s published for opposition, then oppose. That’s a monthslong process. Or sue. Those are the two options,” Gentner said.
The roller derby team declined to comment. The Cleveland Indians, who plan to change their name next year, didn’t respond to a request for comment.
Attorneys have said pro sports teams generally like to be sure of their ability to secure trademark rights before announcing a name change, preferably without a drawn-out legal fight. But clearing a big brand a company plans to use broadly can be difficult as “you’re never going to get a completely clear playing field,” Durden said.
Sports and entertainment attorney Edward H. Schauder of Phillips Nizer LLP noted that most media reports indicate the Indians “goofed” regarding clearance of the name. But he said that while “it looks sloppy, and in ways it was sloppy,” the baseball team’s attorneys may have gone in eyes-open.
“It’s a calculated gamble. Number one, this is going to become the most famous roller derby team in the country. Two, you can always strike a coexistence agreement. Three, you can have multiple businesses with no confusion in the marketplace,” Schauder said.
If litigated, conflict could hinge on consumer confusion, the core question in trademark infringement. Durden noted that even if consumers might think there’s a sponsorship or partnership between the sides, as they do with MLB teams and similarly named minor league affiliates, the roller derby team might have a case the mark would infringe.
Gentner noted the fact that there are myriad instances where amateur sports team use the nickname of pro and major college teams. That could make it easier for the baseball team to argue consumers wouldn’t be confused. But she added that this case is somewhat different from most because the full “Cleveland Guardians” marks are identical, making the outcome uncertain.
“I would suspect that on just a confusion issue, it might get to a jury,” Gentner said. “Any time you get to a jury, it’s a crapshoot.”
The baseball team could challenge the roller derby team’s rights on different fronts like abandonment, failure to function as a trademark, or failure to use in commerce. But the mark appears to have been in use for over a decade, attorneys said.
But attorneys also say the baseball team can afford to make the derby team happy for less than the cost of litigating.
“This is a circumstance where we usually see a settlement in the trademark world,” Gentner said. “Unless the trademark is the core of your business on both sides, it’s just not worth the headache and the amount of money. When it’s the core of business on one side like the baseball team, a lot of times you find a way to resolve it.”