Image from CNN
There are some “special” places in this world. And then…there’s Cleveland. Sitting all alone up there, in a class by itself. Occupying the rarified air that is usually only reserved for a Hollywood comedy, with its guaranteed laughs and fumbles that occur with almost predictable regularity. So, it was no surprise that when the Baseball Club Formerly Known As the Cleveland Indians announced last week that it was changing its mascot name to the Cleveland Guardians, New York attorney Dan Lust, co-founder of Conduct Detrimental, discovered that there already WAS a “Cleveland Guardians” sports team: the men’s roller derby one, to be exact. The team even already owned the domain name ClevelandGuardians.com. What would have been a surprisingly bad move by any other MLB team looked to be sadly on-brand for the hapless “216”-ers.
A team’s mascot name is synonymous with a team’s brand. The Yankees. The Dodgers. Instantly recognizable to even casual sports fans, these brands conjure up the entirety of the experience that any one fan has had with a team. Say “Cleveland”, and folks MY age (40+) almost universally think at least quickly of the movie “Major League” from the 1980’s. This branding is the keystone to a team’s – and their fans! – identity. Look no further than the Cleveland Browns’ NFL team’s own “Dog Pound” of fans for an illustration of this.
As a trademark lawyer myself, I hear any team’s mascot name, and I say “Have you trademarked it yet? You need to protect your intellectual property!” (I’m a rather unapologetic nerd like that.) Intellectual property – copyrights, trademarks, patents, and business secrets – is an often-overlooked set of assets to almost any organization. As with any professional sports team, it is reasonable to expect that they have had dozens of lawyers on this intellectual property, protecting it from the outset. So when Cleveland announced last week that it would be changing its mascot name, it was a little strange that no trademark application immediately appeared in the United States Patent & Trademark Office’s online database for trademark searching, called TESS.
Jump to today, Wednesday, July 28, 2021, and what did I stumble across on TESS while I was waiting for a client to email me some pictures of a product that she’s trademarking? “Cleveland Guardians”! In fact, there WAS an application from July 13, 2020 in the search results! What?! How did they manage to keep their new name secret for over a YEAR?! Well…it turns out that last July (2020), an application was filed with the USPTO that is related to the “Cleveland Guardians” name, by someone purporting to represent the organization (or at least TRYING to do so). TESS has the following record on that 2020 application here:
Now, the applicant filed this trademark application as an “intent-to-use” application, or a “1b” application, meaning that he did not yet actually use the name “Cleveland Guardians” in commerce yet, but that he was indeed planning to do so. So, for the filing of a 1b application, there is no need to submit a “specimen”, or a picture or website or some such other article that “proves” that one is using the applied-for mark in commerce, yet. But our little eager beaver DID submit a specimen! However…he submitted it for “ENTERTAINMENT IN THE NATURE OF BASEBALL GAMES”. So that is what the application reflected.
Oh no! What a mistake! What now? Not to be hindered in the slightest, our intrepid applicant has provided us all with a TRANSLATION of “entertainment in the nature of baseball games”. For my over four decades of sports fandom, I never knew that “entertainment in the nature of baseball games” translated to “Cleveland Guardians”! Whew, am I ever glad this fellow helped me discover my gap in sports knowledge.
The USPTO, stuffy old government arm that it is, was not amused, finding that “ENTERTAINMENT IN THE NATURE OF BASEBALL GAMES” was merely descriptive, and our would-be hero of 2020 sadly was denied the right to trademark this phrase. Or to trademark “Cleveland Guardians”, his purported “translation”.
Which leads us to today’s revelation: On July 23, 2021, just last week, the Cleveland Indians Baseball Company, LLC, FINALLY filed an application for the trademark of “Cleveland Guardians” with the USPTO:
While there is no English translation of “Cleveland Guardians” into any other tongue included on this application, we do wish the applicants the best of luck, both with the USPTO and on the diamond. They’re going to need it, to compete with that roller derby team! Let’s just hope they get around to changing the name of the LLC, too.
Mikal-Ellen Suzuki Bennett is intellectual property counsel at the multi-state firm of Kincaid & Associates, PLLC, and works in the firm’s Wilmington office. She practices mostly intellectual property law these days and spends as much time as she can outdoors and/or with her friends and family. She retains her lifelong love of her family, sports, chemistry, and all things WVU. Let’s Go Mountaineers!