Intellectual Property Insights from Fishman Stewart
Mini Article – Volume 21, Issue 7
A Trademark Storm is Brewing in Professional Sports
Over the years, many sports teams have updated and modernized their trademarks. The Washington Redskins became the Washington Football Team, the Houston Colt .45s became the Astros, the Washington Bullets became the Wizards, and now the Cleveland Indians have become the Cleveland Guardians. See the Cleveland Guardians’ new logo HERE.
The complete rebranding of a company, like these sports teams, needs to be done with immense care and consideration. Trademarks are source identifiers and symbolic of a business’ goodwill and character. Changing a trademark holds the inherent danger of losing a company’s established reputation by the sheer loss of the old identity held by the original trademark. The Cleveland Indians’ transition to the Cleveland Guardians shows proper business care in making the shift. The change was done with purpose to adjust to new market preferences, the new logos are broadly appealing and have strong symbolism, and the new trademark is being heavily marketed to inform consumers that the underlying company remains the same.
However, legal experts and sports fans noticed one potential blemish of the Cleveland Guardians’ otherwise thoughtful plan: a previously established professional sports team with the same trademark. The “Cleveland Guardians” roller derby team has been skating since at least 2014 when they registered their domain www.ClevelandGuardians.com. Although a formal dispute has not arisen between the baseball team and the roller derby team, both companies have filed federal trademark applications with the United States Patent and Trademark Office (USPTO) for the “Cleveland Guardians.”
The identical names are a red flag but are not necessarily a fatal problem in trademark law. Companies may use similar or identical trademarks if there is no likelihood that consumers would be confused, such as with the Detroit Red Wings hockey team and Red Wing Shoes. Although both entities using the Cleveland Guardians trademark are sports teams, it is yet to be determined if the USPTO will identify a potential conflict or if one of the companies will file a formal action against the other.
The roller derby’s use of the Cleveland Guardians trademark pre-dates the baseball team’s application filing date as well as the baseball team’s actual use of the Cleveland Guardians trademark. If a dispute arises between the companies, the roller derby’s prior use status will likely play a key role in determining the outcome, which could spell complications for the future of the Cleveland Guardians baseball team’s fledgling trademark. Even the best executed business plans can run into sticky intellectual property conundrums.
In the next edition of FishBits, we discuss why the music, books, and movies you “buy” on your phone or computer might be disappearing from your electronic library.
Published September 10, 2021
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