Wait . . . What? No, He’s on Second
By Robert J. Romano, Senior Writer
In a case of who’s on first, or more accurately – who got there first, the Cleveland Guardian Roller Derby Team has filed a federal lawsuit against the city’s MLB franchise, the formerly named Cleveland Indians, claiming trademark infringement after the baseball team announced it was changing its name to, yes you guessed it, the Cleveland Guardians. Per the Roller Derby’s complaint, it claims that two sports teams in the same city cannot have identical names, and since they were first, apparently being the Who, the baseball club’s planned name change needs to be either . . . I don’t know . . . sent to third base, or better yet, benched altogether. In addition to its trademark infringement claim, the Guardian Roller Derby Team alleges that the Cleveland Indians franchise engaged in Unfair Competition and Deceptive Trade Practices and because of this, Roller Derby is entitled to injunctive relief under both federal and Ohio law.
In December 2020, the Cleveland Indians organization, after years of protests from both fans and Native American groups, announced it would change the team’s name, moving away from the nickname that had long been the subject of criticism. The baseball franchise settled on the name Cleveland Guardians and on April 8, 2021, according to the Roller Derby Team’s complaint, ‘surreptitiously’ filed a trademark application to secure the Cleveland Guardians name and moniker in the small, East African island nation of Mauritius.[1] Additionally, on July 22, 2021, the day before the team’s press release announcing the name change, the Cleveland baseball franchise filed two federal U.S. trademark applications claiming the exclusive right to use the name Cleveland Guardians for a range of goods and services including shirts, jerseys, and other various team merchandise.[2] For both applications, the Roller Derby Team contends that “the Indians relied for priority on their Mauritius trademark filings from earlier.”[3]
In its leadoff argument, the Roller Derby Team contends that the Indians organization’s intent to rebrand itself as the Cleveland Guardians amounts to unfair competition under federal law, specifically Section 1125(a) of Title 15 of the United States Code, because it owns the trademark to the name Cleveland Guardians under common law. To establish an infringement of an unregistered mark under Section 1125(a), Roller Derby must establish that a) it had a valid and legally protectable mark; b) it owns the mark; and c) the baseball team’s use of the mark to identify goods or services causes a likelihood of confusion.[4]
The Guardian Roller Derby Team alleges that in 2014, under the Cleveland Guardian name and moniker, it began selling a variety of merchandise including patches, shirts, jerseys, cups, and bumper stickers to fans and supporters at events the team was either participating in or hosting.[5] In addition, the Roller Derby Team utilized Facebook and Instagram to promote itself and to interact with fans and supporters, while also using its www.clevelandguardians.com website to sell team merchandise. By promoting its name and logo through these various mediums, the Guardians Roller Derby Team asserts that it has generated ‘goodwill’ throughout the greater Cleveland area that entitles it to a common law trademark based on a priority of use, which, if the baseball club now intends to use in connection with its sports teams, will likely cause confusion in the marketplace for the sport consumer.[6]
Up second on the batting order of claims, the Roller Derby Team alleges Trademark Infringement because in January 2017, it registered its rights to the trade name Cleveland Guardians with the Ohio Secretary of State’s Office.[7] Therefore, the Indians organization’s unauthorized use of the Cleveland Guardians name in connection with a sports team and the sale of related merchandise will likely cause confusion between Roller Derby’s goods and services and the baseball team’s goods and services. Interestingly, however, the Roller Derby Team did not apply for a federal trademark of the Cleveland Guardians name and logo until after the baseball franchise submitted its application.[8]
And finally, batting third in the Roller Derby’s rotation, is the claim that the Indians’ act of acquiring its own trademark to the Cleveland Guardians name violates Ohio’s Deceptive Trade Practices Act since it was done intentionally, willfully, wantonly, and maliciously, and without regard for Roller Derby Team’s rights.[9] The Guardian Roller Derby Team alleges that the Indians knew or should have known of its use and of priority of rights to the name since it would be “inconceivable that an organization worth more than $1B and estimated to have annual revenues of $290M+ would not at least have performed a Google search for ‘Cleveland Guardians’ before settling on the name, and even a cursory search would have returned the website (www.clevelandguardians.com) as the first hit.”[10]
Instead, the Indians intentionally and maliciously filed a trademark application for the Cleveland Guardians name, first, with the East African island nation of Mauritius, (effectively hiding the application unless one knew where to look), before filing its federal U.S. trademark applications based on its ‘priority of rights’ due to Mauritius trademark filings from earlier.”[11]
The Guardian Roller Derby Team asserts that it wasn’t until after the baseball organization filed its federal trademark applications that it informed them of its intended use of the name. The Roller Derby Team response was to offer its trademark rights to the team’s names, including the website, and invited the MLB team to make an offer.[12] The Indians replied by saying I don’t give a darn (shortstop) and offered a “a nominal amount”. Said amount was summarily rejected by the Guardians Roller Derby Team.[13]
Apparently, the Indians organization would rather play a game of Who’s on First by engaging in costly and time-consuming litigation instead a paying a fair value for the rights to the trademark. By throwing the baseball/trademark around the proverbial horn, i.e. Mauritius, the MLB franchise can defer and possibly avoid paying any of its $290 million in annual revenue to a non-profit organization whose profits are used to provide “funding for training its skaters and for hosting community events.”[14] And we thought they were bad when they were using a Native American name and symbol as its trademark.
Robert J. Romano, JD LLM, is an attorney and a sports law professor at St. John’s University
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[1] Case: 1:21-cv-02035 Doc #: 1 Filed: 10/27/21.
[2] Trademark application serial nos. 90844557 and 90844546.
[3] Case: 1:21-cv-02035 Doc #: 1 Filed: 10/27/21.
[4] A&H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198 (3rd Cir. 2000).
[5] Case: 1:21-cv-02035 Doc #: 1 Filed: 10/27/21.
[6] Id.
[7] Certificate No. 3975830.
[8] Serial Nos. 90850953 and 90850972 pending before the U.S. Trademark Office.
[9] Ohio Revised Code § 4165.02.
[10] Case: 1:21-cv-02035 Doc #: 1 Filed: 10/27/21.
[11] Id.
[12] https://www.nytimes.com/2021/10/27/sports/mlb-roller-derby-cleveland-guardians-lawsuit.html
[13] Id.
[14] Id.
