The following article was first published by the Detroit Legal News on September 30, 2021.
Who’s on first? Baseball and roller derby teams use the same Cleveland Guardians Trademark
After more than a century of being known as the Cleveland Indians, the Major League Baseball team is saying “you’re out!” to the team name and rebranding as the Cleveland Guardians. Legal experts and sports fans, however, failed to notice a seemingly obvious issue with the Cleveland Guardians’ new name before the announcement: an already established professional sports team with the same trademark. The Cleveland Guardians is a men’s roller derby team that has been skating since at least 2014 when they registered their domain www.ClevelandGuardians.com. Zachary Grant, associate attorney at IP law firm Fishman Stewart, notes that there is a lot that goes into a name change from an intellectual property perspective.
“As is clear with these Cleveland sports teams, complete rebranding needs to be done with immense care and consideration. Trademarks are source identifiers and symbolic of a business’ goodwill and character,” Grant said. “Changing a trademark holds inherent danger of losing a company’s established reputation by the sheer loss of the old identity held by the original trademark.”
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. Though both entities using the Cleveland Guardians trademark are sports teams, it is yet to be determined if the United States Patent and Trademark Office (USPTO) will identify a potential conflict or if one of the companies will file a formal action against the other.
While a formal dispute has yet to arise between the baseball team and the roller derby team, both organizations filed federal trademark applications with the USPTO for the “Cleveland Guardians.” 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, 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.
“Organizations filing a trademark application, whether in sports or another industry, should act with urgency to secure the desired trademark,” Grant advised. “Additionally, people should consider waiting to
formally announce a new name until the trademark has been officially approved by the USPTO to avoid a potential conflict like the Cleveland Guardians.”
For those applying for a trademark, an IP attorney can ensure the proper steps are followed. The USPTO’s website also has a search engine available to do an initial search on trademarks. Trademark applications are subject to additional review by the USPTO upon application filing and could ultimately be rejected.
“If you have an idea in mind for a trademark, it’s best to get started on the process as soon as possible,” Grant said.
