Roller Derby Guardians New Trademark Filing: Show Me The Money!
Here's an update on the developing story surrounding the MLB’s Cleveland Indians name change that we broke on ConductDetrimental.com.
Out of all the names the Cleveland baseball team could have chosen to rebrand its team, they decided their best option was the Cleveland Guardians… despite the fact that a Cleveland-based roller derby team claimed the name back in 2011, along with the domain name (See ClevelandGuardians.com) and various social media accounts (Instagram and Facebook).
It has been one week since the Indians made their official announcement and things are heating up in the Roller Derby vs. Baseball “Battle for Branding” – The latest news being that the local roller derby team filed a trademark application with the United States Patent and Trademark Office on July 27th for rights to “Cleveland Guardians.” Along with actively posting to their social media accounts and per their Facebook page, rolling out new merchandise, this new filing is just another indication that the roller derby team is not going to disappear like the Indians may have hoped.
The baseball team filed their own trademark application days earlier on July 23. Does the date sound familiar? It should. It is the same day the team officially announced “Cleveland Guardians” as their new name.
The Cleveland baseball team first filed trademark applications for the "Cleveland Guardians" on April 8 in the Republic of Mauritius, a small island near Africa. Why file in a foreign country you ask? The filings in Mauritius allow the team to claim April 8th as its priority date in the US. But unfortunately for the baseball Guardians, the derby Guardians still own and have control over the domain name and associated social media accounts.
Not only that, but when there are conflicting trademark applications, the first-to-file does not mean automatic priority. Other considerations include whether there is only an intent to use the mark or if the mark has actually been used in the past are considered.
Under U.S. trademark law, an Applicant that has filed an application to register their mark can assert priority against a user of an unregistered mark, so long as:
(1) the Applicant has actually used the mark in commerce prior to the unregistered user’s use of the mark in commerce in the same geographical territory, or
(2) the Applicant is able to successfully register their mark provided that (a) the Applicant filed the application for trademark registration prior to the date of actual use of the mark in commerce by the other unregistered user, and (b) the Applicant has either actually used the mark in commerce, or has shown a bonafide intention to use the mark in commerce at the time of filing the trademark application, followed by actual use within the specified amount of time.
However, if the goods and services are distinguished in the product classes, the two companies may have similar names without trademark issues. This is because the guiding principle of trademarks is to avoid consumer confusion. It is likely that the roller derby and baseball team can be significantly distinguished, but that still does not relieve the baseball Guardians of all of their problems – see ClevelandGuardians.com.
With nearly 2,700 votes, 88.6% believe that roller derby Guardians own ClevelandGuardians.com and should be able to make a substantial profit if they ultimately sell the domain to the baseball team. It has held the name for years and has proved its use of both the domain name and social media accounts, even advertising their 2022 tryouts just days after the baseball team’s announcement. Smart move. And not only that, advertising "new merch soon available at ClevelandGuardians.com!" a few days later on July 29. An even smarter move. Seemingly, the more noise they make, the bigger the payout they should receive.
Luckily for the Washington Football Team, who is looking to announce its new name and logo in early 2022, this embarrassment will be tough to beat (not that Washington hasn’t had their fair share of embarrassment and mismanagement over the past year). Washington team president Jason Wright told ESPN that he hopes his team’s rebranding process is “as seamless as possible and of the quality it deserves so these little things, these gremlins that can pop up in the implementation process” are taken care of before rolling it out. I never thought I would say this, but maybe Washington should give the baseball team some much-needed advice.
Per reports, the team apparently did conduct due diligence yet only mentioned potential conflicts with the New York Guardians of the XFL, Marvel’s Guardians of the Galaxy, or a mysterious December 25, 2020 trademark filing by Bryant Street Sports LLC that was then abandoned on July 27, 2021. From my perspective, it seems the Cleveland baseball team may have settled this earlier trademark and potentially paid the filer to withdraw its application.
Conspicuously absent, however, is that they settled with the roller derby Guardians, as shown by the derby’s recent filing on the same day that Bryant Street Sports LLC abandoned theirs.
Assuming that was the case, isn’t that worse? The question that no one has answered, and maybe the Indians legal counsel can, is what was the rush to announce this on July 23rd without having everything in order.
From the roller derby Guardians’ July 27th trademark filing, it seems clear the trademark debacle was not solved either. My question for the baseball Guardians is, what were you thinking? Now you have to cut a check for the website domain name, related social media accounts, and now the trademark.
The Cleveland baseball team seems to have two options here: either pay the roller derby team whatever they want or change the name… again. You’ve created a giant mess and you have no one to blame but yourselves.
The premature announcement will likely cost the team millions, as the more hype the derby team receives, the more money they may have to fork over. There are no signs of the roller derby team slowing down and they may be rolling in a lot of dough once this debacle is all over. No pun intended.
Lesson learned. Never underestimate a roller derby team.
Stephanie is a recent graduate of New York Law School and a law clerk at Geragos & Geragos. You can find her on Twitter @SWeissenburger_ and Instagram @Steph_ExplainsItAll