“The Indians’ initial announcement already started causing the sorts of chaos, confusion and harm that would be expected if the two teams were to operate in the same city using identical names.”
— Roller Derby Guardians lawsuit
“We believe there is no conflict between the parties and their ability to operate in their respective business areas.”
— Baseball Guardians, in response
Nearly two years ago, the Cleveland baseball club announced it would be retiring the name the organization had used for more than 100 years and would begin the search for a new moniker. All sorts of Cleveland-related names were suggested: Rockers, Buckeyes, Spiders, Wild Things, Municipals, and Blue Sox among them.
The team did all sorts of research, test-marketed names, checked out potential conflicts and began to cross names off the list. Buckeyes would be too easily confused with Ohio State. Spiders weirded some people out and was already in use by the University of Richmond, and so on. Eventually, the team began to focus on the name “Guardians,” inspired by the statues on the Hope Memorial Bridge just blocks from the stadium.
And then they did what any sports team, book publisher, movie studio or business entrepreneur does in preparation for a launch — they checked to see if the name was already in use, who was using it, and whether there were potential trademark issues. And they moved to try to make some “claim” on the name in advance of a U.S. announcement (narrated by Tom Hanks, none the less) of the name. But they skipped, intentionally or accidentally, one very important step.
You see, the name was already in use. By a sports team. In the same city. Ok, it’s not a professional sports team, but it still is using the name. Those other Cleveland Guardians are an amateur roller derby team (yes, roller derby is still a thing), who last competed in the Men’s Roller Derby Association in 2018 but are planning a 2022 season.
Now, you may think that’s the equivalent of your weekend indoor soccer team, or the curling club that your friend belongs to, and it appears the baseball Guardians felt about the same way about it. But that cavalier attitude may have sealed the team’s legal fate, as the roller derby Guardians might have caught them napping.
The former Tribe did two things to establish their control over their name. First, they registered a trademark in the island nation of Mauritius. You might be asking yourself, “Why Mauritius?!?” Well, it’s a common practice when organizations want to lay claim to a trademark but don’t want to spill the proverbial beans, to file the trademark claim in a nation that doesn’t have a searchable trademark database on the internet, but is also a signatory to the Paris Convention on intellectual property rights.
The baseball Guardians filed their overseas trademark application in April. They then made an offer in early June to buy out the rights from the roller derby team. That team’s owner says he proposed to sell the rights, rename his team, and even transfer ownership of “clevelandguardians.com” to the baseball team, but the diamond dwellers offered what he calls a “nominal amount.” He made a counter-offer and has since heard only silence from the baseball club. When the baseball team announced its name, he filed a trademark infringement lawsuit in federal district court.
So what’s really going on here? Well, first, the fact that two entities share the same name is not, in itself, a trademark violation. The question is always whether the two entities will cause “confusion” in the marketplace. Lexus cars and Lexis, the online legal research company, are not likely to be confused, even though their names are nearly identical and are homophones. Similarly, the fact that two sports teams have the same name isn’t necessary a problem. Even among professional sports, there are two Giants, two Cardinals, two Jets, and two Kings. Thus, it’s entirely possible that the Cleveland baseball club is simply confident that it will prevail in the federal trademark lawsuit.
It’s also entirely possible, if not likely, that both entities are banking on very real, but non-legal considerations here. There’s no doubt that the value of the trademark “Guardians” went up substantially as soon as the video with Tom Hanks’ voice announced the baseball team’s intentions. The roller derby Guardians may simply have been waiting for the price to go up, and having heard no response to their counter-offer, filed suit to further increase that pressure. It’s equally as likely that the baseball Guardians have done the math on the legal costs of maintaining that lawsuit and don’t believe that the skating Guardians are in it for the long haul. Of course, an intellectual property law firm might just be willing to handle a high profile case like this one for the public relations value alone.
It’s likely that we’ll see this case resolve with an “undisclosed” financial settlement, but the prospect of a landmark trademark decision is enticing. Until then — Go Guardians! (Both of them.)
David Hejmanowski is judge of the Probate/Juvenile Division of the Delaware County Court of Common Pleas, where he has served as magistrate, court administrator, and now judge, since 2003. He has written a weekly column on law and history for The Gazette since 2005.