The Cleveland Guardians: How a Local Roller Derby Team May Have Thrown a Major League Baseball Team a Major Curveball
On July 23, 2021, the Cleveland Indians, a Major League Baseball (MLB) franchise, announced that the team would soon have a new name: the Cleveland Guardians. According to team representatives, significant resources were spent in selecting the new name and ensuring that such name was available for use.
It may have come as a surprise to the Cleveland Indians when, on July 27, 2021, four days after the team’s announcement that its name was to change, a Cleveland-based non-profit filed a trademark application for the mark CLEVELAND GUARDIANS in connection with various merchandise, including bumper stickers, koozies, clothing, and the like. The non-profit in question? Guardians Roller Derby (d/b/a Cleveland Guardians), a local men’s roller derby team.
In selecting a new name or new mark, it is generally prudent for an organization to perform a search of existing marks to determine whether the new name or mark may be available for use. While it is not known at this point whether the Cleveland Indians were aware of the Guardians Roller Derby organization at the time they announced their new name, if it is the case that the team did not know of the Guardians Roller Derby group, the announcement and adoption of the team’s new name were almost certainly blunders.
As a general rule, the rights of an earlier user of a trademark (whether or not the trademark is registered) will “win out” over the rights of a later user of the trademark. In the case of an earlier use of an unregistered mark, the earlier user would have “common law” rights in the trademark, and could sue a later user for infringement and/or file oppositions to registration in any application by the later user to register the trademark.
Because Cleveland Roller Derby did not file a trademark application until July 27, 2021, it would likely only be able to rely on common law trademark rights in the CLEVELAND GUARDIANS mark. Notably, Cleveland Roller Derby alleges in its trademark application that its earliest use of the trademark occurred in April 2014. If this priority date can be established, Cleveland Roller Derby’s trademark rights would extend back to that time.
That being said, resolving disputes between competing trademark users often requires a fact-intensive analysis. For example, while it is true that Cleveland Roller Derby’s rights may extend back to April 2014, the roller derby team would need to establish that its use of the mark has been continuous and uninterrupted since that time. If it cannot prove continuous use – that is, if Cleveland Roller Derby discontinued its merchandise sales or suspended its operations at any point between April 2014 and July 2021 – the earliest priority date to which Cleveland Roller Derby would be entitled is the date on which it resumed its merchandise sales or operations.
In such a case, in order for the Cleveland Indians to establish superior rights to the CLEVELAND GUARDIANS mark, all they would have to do is show that they are entitled to a priority date earlier than that date on which Cleveland Roller Derby resumed its sales or operations. According to a United States trademark application made by the Cleveland Indians Baseball Company, LLC on July 23, 2021, it appears that the Cleveland Indians will be able to establish a priority date as early as April 8, 2021, by virtue of an earlier filing, made by the Cleveland Indians in the Republic of Mauritius on that date.
Returning to the question of whether the Cleveland Indians team was aware of the Guardians Roller Derby’s use of the CLEVELAND GUARDIANS mark, in light of the resources of the Cleveland Indians and the bullpen of capable attorneys that the organization presumably has at its disposal, it is unlikely that the Guardians Roller Derby team was absent from the Cleveland Indians’ radar. Instead, information available to the public may suggest that either (i) discussions and negotiations are ongoing between the Cleveland Indians and Cleveland Roller Derby, or (ii) the Cleveland Indians have taken and are confident in the legal position that any suit or opposition by Cleveland Roller Derby would not hold up in court or, in the case of an opposition, before the Trademark Trial and Appeal Board.
If the latter, the Cleveland Indians could be relying on the fact that the Cleveland Roller Derby’s website does not appear to have been updated between 2018 and July 24, 2021, the day following the Cleveland Indians’ announcement of its planned name change. These facts could suggest that Cleveland Roller Derby abandoned its common law trademark rights in 2018 and only revived its use of the CLEVELAND GUARDIANS mark in an effort to catch a “windfall” from an MLB team. If that is the case, Cleveland Roller Derby may only be entitled to a priority date of July 24, 2021, a date that the Cleveland Indians’ Mauritian filing would likely defeat.
In most cases, it is also wise to secure domain names and social media handles in use that consist of or contain the new name or mark, if for no other reason than to reduce the possibility that the domains or handles are used in a way that may harm the goodwill associated with the new mark.
It does not appear that the Cleveland Indians obtained domain names related to the CLEVELAND GUARDIANS mark. Cleveland Roller Derby’s website is www.clevelandguardians.com, and it is possible that the transfer of this domain to the Cleveland Indians is a subject of ongoing discussions. Still, however, related domains (such as www.guardians.com) are currently listed for sale, and related social media handles are not claimed. Because the purchase and transfer of domain names and social media handles frequently results in information related to such purchase and transfer being made publicly accessible, some organizations prefer to refrain from obtaining domain names and social media handles far in advance of rolling out a new name or trademark.
However, by announcing the planned name change before securing domain names and social media handles, the Cleveland Indians may have opened themselves up to potentially extortionate asking prices for those domain names and handles. So, while the Cleveland Indians may have solid legal arguments against a challenge by Cleveland Roller Derby, the Cleveland Indians certainly have not hit a home run in their roll out of the team’s new name.
 Yes, that is correct – the Cleveland Indians filed a trademark application for CLEVELAND GUARDIANS on April 8, 2021, in the tiny island nation of Mauritius, located in the middle of the Indian Ocean. Under the Paris Convention for the Protection of Industrial Property (of which both Mauritius and the United States are members), a trademark applicant may file its application in one member state and, within six months, may file an application for the same mark in another member state claiming the benefit of the first filing’s priority date. It is likely that the Cleveland Indians selected Mauritius because, like a handful of other members of the Paris Convention, that country’s intellectual property databases are not readily searchable or accessible to the public. This strategy is often used by large, public-facing organizations that contemplate the adoption of a new name or trademark and are interested in securing legal rights to such name or mark, but wish to keep the name or mark confidential for some time. For instance, had the Cleveland Indians filed its application first in the United States on April 8, 2021, such application would have become publicly available almost immediately, and the news of the team’s name change would have been rendered publicly available as well.