The Battle of the Cleveland Guardians

The Battle of the Cleveland Guardians

Nearly every word in the English language has been trademarked by the United States Patent and Trademark Office (“USPTO”).^[1] That is precisely why professional sports teams often conduct a substantial amount of due diligence when selecting a new name for its existing franchise.^[2] However, finding the right name requires a considerable amount of time and patience, both of which are essential to ensuring the nonexistence of onerous liabilities.^[3] When a name has been selected, naturally, a franchise will seek to trademark all relevant words, phrases, symbols, and designs,^[4] including primary and alternate logos,^[5] websites, and corresponding social media accounts.^[6] However, that franchise must first cross the sizeable hurdle of trademark complications,^[7] where squatters,^[8] and other individuals or entities, frequently hold the rights to those trademarks, thus challenging the legality of the franchise’s new name. That is precisely where Major League Baseball’s (“MLB”) Cleveland Guardians, formerly known as the Cleveland Indians, found itself due to some bad judgement and ignorance.

On July 23rd 2021, the Cleveland Indians announced that it would rename itself the “Cleveland Guardians” following the conclusion of the 2021 MLB season.^[9] Team owner and chairman Paul Dolan explained that although the franchise considered over 1,200 potential names, the team’s new name was “unique…to Cleveland.”^[10] Three months earlier, the baseball team, unbeknown to American media outlets, filed a trademark application for the Cleveland Guardians in the island nation of Mauritius.^[11] This strategic move, often used by large corporations to avoid revealing plans for a rebrand,^[12] was likely utilized to set a priority date in the trademark^[13] for any application filed by the baseball team within six months in a country bound by the Paris Convention, including the United States.^[14] Therefore, when the baseball team filed two trade applications covering numerous goods and services on the day of the announcement, it guaranteed that its application would be reviewed first by USPTO trademark examiners in the event squatters or other opposing applicants suddenly appeared to challenge its ownership.^[15] However, the billion-dollar franchise either neglected to search for likely opposers or neglected to care for the ramifications of not doing so,^[16] as it quickly became apparent that another Cleveland Guardians team, albeit one in the sport of roller derby, had been using the “Cleveland Guardians” mark in connection with sports-related entertainment services for several years.^[17]

The flat-track roller derby team has operated under the name “Cleveland Guardians” since 2013, competing against other roller derby teams across the United States and Canada.^[18] Since then, the team has sold merchandise on its website, ClevelandGuardians.com,^[19] and has maintained an active social media community on Facebook.^[20]

On July 27th 2021, subsequent to the baseball team’s announcement but prior to the team filing a trademark with the USPTO, the roller derby team filed its own trademark with the USPTO.^[21] Although the roller derby team had actively used the Cleveland Guardians name for years before the announcement, it had never sought to formally register the trademark with the USPTO.^[22] Regardless of its inaction to file prior to the baseball team’s filing in Mauritius, the roller derby team would likely have been deemed as the first entity to use the trademark.^[23] However, the baseball team would have been deemed the first entity to file for the trademark.^[24] The United States trademark regime generally awards trademarks based on “first-to-use.”^[25] rather than “first-to-file.”^[26] To be granted a trademark based on use, one must present evidence that the mark has been used for business purposes, as opposed to being inactive or squatted on.^[27] That is precisely where the roller derby team had the decisive advantage.^[28]

On October 27th 2021, the Cleveland Guardians roller derby team sued the Cleveland Guardians baseball team in federal court, claiming the latter “lied”^[29] on its trademark application filed in July by declaring that no one else held the rights to the “Cleveland Guardians” mark.^[30] According to the complaint, two months after the baseball team filed its trademark application, the team’s representatives contacted the roller derby team to inform it of the name change.^[31] Following discussions between both sides, the baseball team offered “to pay a nominal amount”^[32] of less than $10,000^[33] in exchange for the rights to the roller derby’s name and website.^[34] The roller derby team then rejected the offer, thus leading to further negotiations, and eventually, the lawsuit.^[35]

On November 16th 2021, with the start of Major League Baseball’s 2022 season less than five months away,^[36] the baseball team announced it had reached a settlement with the roller derby team, where “both organizations [would] continue to use the Guardians name.”^[37] Although many of the agreement’s details were not disclosed,^[38] there had been speculation among many professionals and fans that the baseball team paid over $1 million to the roller derby team.^[39] Aside from quieting public relations concerns and avoiding unnecessary litigation, this settlement could have provided the baseball team with certain benefits that a court holding of infringement would have not.^[40] For instance, the baseball team could have purchased the rights to the clevelandguardians.com domain^[41] and its social media account handles.^[42] However, in the days following the settlement, the roller derby team continued to use its website and @ClevelandGuardians handle on Instagram, while the baseball team utilized the CleGuardians.com domain and @CleGuardians handle.^[43]

Although the settlement likely ended the legal dispute, litigation between the two teams would have shaped up to be an interesting battle. The roller derby team had been using “Cleveland Guardians” in connection with sports-related entertainment services for several years,^[44] while the baseball team had only begun using the name for months. Had the case proceeded to court, the pivotal question in the dispute likely would have been whether an ordinary consumer would confuse the two teams, which come from different sources, as emanating from a single source or from associated sources.^[45] Courts have typically conducted this analysis by evaluating eight relevant factors,^[46] including (1) strength of the mark, (2) proximity of the goods, (3) similarity of the marks, (4) evidence of actual confusion, (5) marketing channels used, (6) type of goods and the degree of care likely to be exercised by the purchaser, (7) defendant’s intent in selecting the mark, and (8) likelihood of expansion of the product lines.^[47] Particularly interesting to this dispute would have been a court’s analysis of factors five and six. Regarding factor five, although the two teams associated themselves with the Cleveland market, they competed in two different sports with considerably different sized fanbases. Additionally, it does not seem plausible that, for example, had the ordinary consumer been asked whether they would have wanted to attend a Cleveland Guardians event, they would have been confused. An ordinary consumer would likely associate the name Cleveland Guardians with the baseball team, as opposed to the unrenowned roller derby team, primarily because of its nationwide MLB fanbase.^[48] However, regarding factor six, it seems plausible that, for example, an ordinary consumer would have mistaken admission tickets to a Cleveland Guardians roller derby match for admission tickets to a Cleveland Guardians baseball game.

In addition to confusing the two teams, an ordinary consumer could have also incorrectly assumed an affiliation between the baseball team and the roller derby team.^[49] One reason for this assertion is that the name “Guardians” holds significant value to the residents of Cleveland, as it “pays homage to the Guardians of Traffic statues near Progressive Field in Cleveland.”^[50] Another reason is the obvious similarities between the two organizations: both are professional sports teams with the same name operating in the Cleveland area, selling sports-related merchandise bearing that name.^[51] Therefore, it is not difficult to imagine a scenario in which a court could have concluded that the coexistence of the two marks created a likelihood of confusion.

Although the battle between the two Cleveland Guardians teams ended without a court appearance, the baseball team exhibited an instructional display of how not to act as a professional sports franchise. The team ultimately rectified its mistakes by resolving its dispute with the roller derby team but did so in an embarrassing fashion. Had the baseball team prolonged the dispute, it might not have been afforded sufficient time to market its rebrand and sell merchandise bearing the “Cleveland Guardians” mark. Instead, the team can now begin to conduct such activities and devote its time and energy to winning on the baseball field rather than winning in the courtroom. Regardless of the outcome, it is clear that the baseball team learned a valuable lesson, one that professional sports franchises will undoubtedly remember when selecting a new name for its existing franchise: never undervalue the importance of due diligence and the perseverance of a Guardian.