Many learned the Cleveland Guardians already existed as a roller derby team only after the city’s Major League Baseball team announced it would adopt the name.
Attorneys for the Cleveland Indians, though, all but certainly knew long before.
Social media buzzed with derision on Monday at the apparent oversight. But a closer look at the trademark activity of the team reveals the methodical process teams take to forge a brand that they hope will prove valuable for decades.
All companies put considerable thought into their brands, but major professional sports carry a particular dynamic, because fans become invested in the team name and logo.
A representative for the Cleveland Indians declined to comment. The Cleveland Guardians roller derby club didn’t immediately respond to requests for comment.
(1) What could go wrong?
Even with questionable rights, failing to clear conflicts with existing rights-holders can at least expose brand owners to costly litigation, as well as public relations problems if others perceive a pro sports team as bullying a small group off its identity.
The Guardians roller derby team’s website doesn’t indicate activity since 2018, except for a notice last week that the team was recruiting for 2022. The team never registered trademarks, and one could argue no one would confuse it with an MLB baseball team.
But rights are created by use not registration, and likelihood of consumer confusion analyses upon which trademark infringement hinges is a complicated multifactor analysis.
(2) Did the Cleveland Indians leave their new brand vulnerable to attack?
Probably not. The Cleveland Guardians derby team owned the clevelandguardians.com domain and appear on the first page of Google search results—hard to miss.
Failure to properly vet a name for potential infringement conflicts can lead to costly legal battles and public relations damage if not loss of the brand. Given the money in a sport like Major League Baseball and branding stakes, attorneys said it was unlikely a roller derby team easily found on the web would escape notice.
Most likely, there’s already an agreement in place with the derby team, trademark attorney Joshua Gerben of Gerben Perrott PLLC said.
“There’s almost a zero percent chance that major league baseball and its attorneys were unaware of the roller derby club and haven’t already addressed the situation with it,” Gerben said. “Look anything’s possible. But the MLB has very thorough trademark attorneys. I know from personal experience.”
Trademark attorney Catherine M.C. Farrelly of Frankfurt Kurnit Klein & Selz agreed that the baseball team probably found and engaged the roller derby team during their due diligence process.
“I think that people’s knee-jerk reaction is to assume the baseball team might not have known about the roller derby team,” she said. “But that is pretty unlikely.”
(3) What makes sports different?
Most companies want to register brands they intend to use as quickly as possible. Sports teams tend to prefer to keep a new team name secret until a publicity-generating reveal.
That creates an awkward situation where the team wants to vet and secure a name without filing an intent to use application that would tell the world—at least once noticed by throngs of trademark lawyers watching the register closely.
Often fans know when a team is looking to create a brand, too. That can be either because it’s new, like the National Hockey League’s Seattle Kraken, or because an existing name has generated negative publicity or is viewed as offensive by many, as with the Indians or the Washington Redskins.
Teams spend months to years picking, designing, and tweaking the brand before they’re ready to announce.
All that plus the value of a brand incentivizes squatters who try to establish trademark rights to the name in hopes of being bought out.
They have to actually sell something rather than just register a trademark to have legal rights, but teams often don’t want to bother with plowing through litigation that can take more than a whole season to resolve, so they try to iron them out beforehand.
(4) Did the Indians deal with applicants trying to guess the name?
Several, it seems. Over the last year applicants tried to register not just the Cleveland Guardians, but also the Cleveland Natives, Warriors, Foresters, Squires, Heroes, and Baseball Club.
The ball club filed oppositions before the Trademark Trial and Appeal Board to all of them. Gerben said that while the team could have simply targeted the Guardians application and perhaps any others on a short list, it probably also wanted to not tip anyone off based on which names it opposed.
Elie Mishaan, who applied to register Cleveland Guardians for entertainment in the nature of baseball games and for licensing of intellectual property rights, abandoned his application on July 21. The team announced the choice of “Guardians” two days later.
“Too coincidental,” Gerben said. “That was probably a final loose end.”
Mishaan didn’t respond to a request for comment on whether there was a settlement agreement.
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—FROM BLOOMBERG LAW:
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