By Mark Sommers and Jessica L. Hannah
The Cleveland MLB team recently settled a trademark infringement lawsuit regarding its new team name. The trademark dispute and the team’s rebranding process highlight several strategic decisions for sports brands contemplating a refresh or name change.
After more than a century as the Cleveland Indians, the MLB team announced in December 2020 that it would be changing its team name. Following months of speculation and brainstorming, the team revealed in July 2021 that it would become the Cleveland Guardians. The MLB team now shares the “Guardians” name with eight iconic statues called the “Guardians” that stand on both ends of the Hope Memorial Bridge in Cleveland. The Guardians statues have become celebrated hallmarks of the city since their introduction in the 1930s. Not surprisingly, “Guardians” is a popular name in Cleveland for businesses, including a roller derby team called the Cleveland Guardians that has an Ohio state trademark registration for “CLEVELAND GUARDIANS.”
In October 2021, the roller derby team sued the MLB team in the Northern District of Ohio for trademark infringement. In the complaint, the roller derby team alleged that the MLB team approached the derby team in June 2021 because it was considering “Guardians” as a new team name. According to the complaint, the derby team sent examples of its Guardians logos and jersey to the MLB team and offered to sell its intellectual property to the MLB team. The derby team claimed that it rejected an offer for a “nominal” amount from the MLB team and did not hear from the MLB team again. The complaint states that the derby team later learned that the MLB team filed a U.S. trademark application for CLEVELAND GUARDIANS in July 2021 based on its April 2021 application for the same trademark filed in Mauritius. The derby team alleged that the MLB team knowingly infringed the derby team’s intellectual property, and that the MLB team’s use of CLEVELAND GUARDIANS would overwhelm the rightful first use of that same name by the roller derby team. Less than a month after the suit was filed, however, the parties released a joint statement announcing that they had reached an agreement permitting both parties to use the Guardians name.
Although this trademark dispute was short-lived, it illustrates the hurdles for navigating high-profile rebrandings. First, the MLB team filed an application for its chosen name outside the United States. Specifically, it filed an application for the mark CLEVELAND GUARDIANS on April 8, 2021 in Mauritius, where the database of pending trademark applications is difficult to search. When the team was ready to announce its new name, it filed a trademark application in the United States and claimed priority back to the filing date of the Mauritius application. Because new trademark applications in the U.S. Patent and Trademark Office (“USPTO”) database are searchable almost immediately, filing in a country like Mauritius allowed the MLB team to keep its new name relatively secret. This strategy minimized the risk not only that the new name would be publicized ahead of schedule, but also that would-be trademark squatters would try to file trademark applications for CLEVELAND GUARDIANS in hopes of extracting money from the MLB team. At the same time, the corresponding U.S. trademark application benefits from the earlier April filing date of the Mauritius application.
Second, when a popular sports brand changes its name or logo, it may encounter third parties that are already using its chosen name or logo. Clearance searches will likely reveal such third-party uses, and the brand owner must then decide if or how to negotiate with the existing users. For example, use of the name in an unrelated industry may present less of a challenge, while use of the same mark in a similar field or in connection with similar goods and services may complicate negotiations. In this case, both Cleveland Guardians teams are sports teams, but baseball and roller derby are different in nature and presumably have disparate fan bases. Although the terms of the parties’ agreement are private, the parties’ uses of the CLEVELAND GUARDIANS mark and their respective branding suggests that each team will use different colors and logos to minimize any potential consumer confusion. Of course, maintaining the privacy of any negotiations may become difficult for prominent brands if negotiations stall, but the terms of most settlement agreements are kept confidential.
Third, maintaining brand identity after a name or logo refresh can serve several important purposes for the sports brand and its fans. Here, the MLB team announced that it would continue to use its red, white, and color scheme when it became the Cleveland Guardians. This continuity benefits both the MLB team’s fans, who have long recognized and worn the team’s merchandise, and the roller derby team, whose green and black colors are markedly different from the MLB team’s color scheme. Further, the two teams incorporate different additional branding elements into their logos and gear, such as different images of the Guardians statues and, in the case of the MLB team, a baseball. These differences make it unlikely that fans of the MLB team will mistake the derby team’s green and black logo for the MLB team’s logo and vice versa. These distinct brand identities were very likely the core components of the amicable resolution and planned mutual use of the CLEVELAND GUARDIANS name that these two teams ultimately brokered.
Brands contemplating a new name or logo can learn from the experience that the Cleveland Guardians baseball team endured. In the end, the parties were able to resolve this dispute on the field of play rather than a court of law, which no doubt allowed both teams to win.
