The Cleveland MLB and Roller Derby teams share the name GUARDIANS

“In its complaint, Roller Derby Team alleges that the MLB lied to the USPTO when it asserted in its application that it was unaware of any other person who had the right to use the CLEVELAND GUARDIANS mark in connection with the merchandise included in that application.”

The MLB baseball team formerly known as the Cleveland Indians has a new name that pays homage to Cleveland’s history. The team’s name was last changed in 1915, when it left its previous name, “Siesta” (short for “Napoleon”) in favor of the “Indians”. Now, more than a century later, the team has joined other sports franchises in retired Native American names, mascots, and imagery saturated with negative and racial connotations. With the help of Cleveland Indians actor and fan Tom Hanks, the baseball team announce On July 23, 2021 it will adopt a new name: the Cleveland Guardians.

But the Guardians already had a massive presence in Cleveland. That is, the name The Guardians refers to the eight 43-foot-high statues on the Hope Memorial Bridge that spans the Cuyahoga River. The Art Deco sculptures, called traffic guards, were designed by an architectural firm in Cleveland and constructed in 1932. The Guardians showcase strides in transportation, as evidenced by the different vehicles each guard carries, from wagons, to carts, to Cars and trucks. The statues also incorporate ancient history, with their winged helmets and winged laurel figures evoking the winged helmet of Mercury – the Roman god of trade and travel. These sandstone icons have been beloved protectors of Cleveland travelers and residents for nearly a century.

Many Guardians of Cleveland

As proud guards on the Memorial Bridge of Hope, traffic guards lead travelers not only to Cleveland but to the Cleveland MLB Stadium itself. Given the importance of the Guardians’ statues to the city and their proximity to the stadium, it’s no surprise that the Cleveland MLB team chose to become the “Cleveland Guardians.” As one would also expect, other companies in Cleveland also use the word “Guardian” in their names, including the coffee shop, the transportation company, and the chemical company. But it was the Cleveland Guardians Roller Derby that questioned whether it was legal for another Cleveland sports team to use the same nickname.

On October 27, 2021, the Roller Derby team filed a complaint against the MLB team in the Northern District of Ohio alleging trademark infringement and detailing the date of the parties’ negotiations over the Guardians name. According to the complaint, the Roller Derby team began operating in Cleveland in 2013 and obtained an Ohio trademark registration for CLEVELAND GUARDIANS in January 2017. The Roller Derby team claimed that in June 2021, the MLB team told the derby it was considering “Guardians” as one of the potential new names. According to the derby team, the MLB team has requested copies of the derby team’s jersey and other intellectual property to determine if the MLB team is interested in acquiring them. The derby team presented images of its green and black logos, which include the letter “G” topped with a winged helmet, the phrase “CLEVELAND GUARDIANS” with the letter “G” winged, the phrase “CLEVELAND GUARDIANS” with the head helmet of a statue of Guardians, and the head of an independent guardian.

The complaint states that the Roller Derby team has become concerned about the risks of adverse confusion that could result from renaming the MLB franchise to the Guardians, including the possibility that MLB fans will believe the roller derby team has stolen the Guardians name – that is, if any mention of the Roller derby could It survives the inundation of Guardians MLB-related content online and on social media. The Roller Derby team offered to sell the domain name and intellectual property to the MLB team but turned down what it considered a “nominal” sum. The complaint does not indicate that the parties had any further discussions.

Secrets and surprises

A month later, on July 27, 2021, the Roller Derby team filed a federal trademark application for the standard letter CLEVELAND GUARDIANS covering apparel and merchandise related to rollerball (and not expressly related to baseball, softball, mascots, or related pitches). But the MLB team already filed an application for CLEVELAND GUARDIANS with the US Patent and Trademark Office (USPTO) on July 23, 2021, the same day it announced its name change. The MLB Team application covers many products, including games, software, keychains, and paper goods. Roller Derby claimed in its complaint that the MLB lied to the USPTO when it asserted in its application that it was unaware of any other person who had the right to use the CLEVELAND GUARDIANS mark in connection with the merchandise included in this application.

The MLB team’s trademark application revealed another surprise: the application claimed priority from April 8, 2021, based on a trademark application for the same trademark filed in Mauritius. The application was submitted two months before the MLB team contacted the Roller derby team, the application in Mauritius gave the MLB team the advantage of a few months of relative confidentiality due to the difficulty of searching Mauritius’ online database for pending trademark applications. The MLB team followed a strategy sometimes used in other notable name changes for the first filing in a country where the trademark database is difficult to search. This method allows the owner to claim priority from an earlier date while maintaining confidentiality before major disclosure. By contrast, new USPTO trademark applications are almost instantly searchable online.

For Roller Derby, MLB’s endorsement and use of CLEVELAND GUARDIANS constitutes unfair competition under Section 43(a) of the Lanham Act, trademark infringement, unfair competition, embezzlement and deceptive business practices under Ohio law, according to the complaint. The Roller Derby team also claimed that the MLB’s new “Winged G” logo was remarkably similar to the Roller derby’s Winged G logo and indicated that the Winged G logo was among those that the Roller derby sent to the MLB team during negotiations. However, the “Winged G” logos of the two sides have notable differences. For example, the Roller derby logo consists of a white G outlined in green, with a green and white winged helmet above the G. The MLB “Winged G” logo included in the complaint, on the other hand, consists of two red “G”s with white wings on the The sides of the baseball.

reach an agreement

On November 16, 2021, less than a month after the lawsuit was filed, the Roller Derby team and the MLB team released a joint statement announcing that they had reached an “amicable resolution” to the dispute that would allow both parties to continue using the Guardians’ name. . Presumably, the MLB team agreed to pay more than a “token” amount to the derby team in connection with the MLB’s planned use of the GUARDIANS name.

Although the parties have not disclosed the terms of the settlement, the public will be able to infer some terms based on what is happening in the market. For example, the Roller Derby team’s website is still located at the same address, while the MLB team’s website is here, indicating that the parties have likely agreed that the derby team will keep the domain name, at least for the time being.

Party branding elements and color schemes are likely to play an important role in distinguishing the difference and reducing potential confusion among consumers. As the MLB team announced during its rebranding announcement in July 2021, it continues to use its iconic red, white and blue colors. The MLB team’s signature “C” is shown in red or blue, and their website in red. Likewise, MLB’s current merchandise offerings include blue, red, gray and white apparel and white berets, with the red and white “Winged G” logo and GUARDIANS nameplate. By contrast, the CLEVELAND GUARDIANS derby team crest and Winged G crest are in green and white, and their website is primarily in black. For baseball fans, the continuity of the color scheme is likely to help preserve the identity of the team while reducing confusion with the derby team’s green and white color scheme.

Although the derby team claimed in its complaint that its supporters were concerned about confusion between the two teams, it is unclear whether consumers had confused a Major League baseball team with the domestic drummer based on the GUARDIANS’ common name. Although both are sports teams, it can be argued that fans of the two teams in question will be familiar with their respective logos and color schemes and are unlikely to believe that the MLB team started using green or that the derby team started including baseball With its logo, for example. Moreover, any potential confusion will be quickly dispelled by perusing party websites or social media accounts, which each identify the sport and organization. It is clear that an agreement allowing both parties to use GUARDIANS would have been based on the parties’ decision that confusion is unlikely based on any guarantees that have been put in place.

This tale of two teams of Sports Guardians seems to have bridged the gap, as each team can share the name of the Guardians while honoring historic Cleveland statues.

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