“In its complaint, the roller derby team claimed that the MLB team lied to the USPTO when it affirmed in its application that it was not aware of any other person holding the right to use the CLEVELAND GUARDIANS mark in connection with the goods listed in that application.”
The MLB baseball team formerly known as the Cleveland Indians has a new name that pays homage to the history of Cleveland. The team last rebranded in 1915, when it left behind its former name, the “Naps” (short for “Napoleons”) in favor of the “Indians.” Now, over a century later, the team has joined other sports franchises in retiring Native American names, mascots, and imagery imbued with negative and racist connotations. With the help of actor and Cleveland Indians fan Tom Hanks, the baseball team announced on July 23, 2021 that it would adopt a new name: the Cleveland Guardians.
But the “Guardians” already had a massive presence in Cleveland. That is, the Guardians name references eight 43-foot tall statues on the Hope Memorial Bridge that spans the Cuyahoga River. These art deco sculptures, called the Guardians of Traffic, were designed by a Cleveland architectural firm and erected in 1932. The Guardians showcase strides in transportation, as evidenced by the different vehicle that each Guardian holds, from wagons, to stagecoaches, to cars and trucks. The statues also incorporate ancient history, with their winged helmets and winged laurels that evoke the winged helmet of Mercury—the Roman god of commerce and travel. These sandstone icons have been beloved protectors of Cleveland travelers and residents for nearly a century.
Cleveland’s Many Guardians
As proud sentinels on the Hope Memorial Bridge, the Guardians of Traffic lead travelers not only into Cleveland but to the Cleveland MLB stadium itself. Considering the significance of the Guardians statues to the city and their proximity to the ballpark, it is little surprise that the Cleveland MLB team would choose to become the “Cleveland Guardians.” As one would also expect, other businesses in Cleveland also use “Guardian” in their names, including a coffee shop, a transportation company, and a chemical company. But it was the Cleveland Guardians Roller Derby team who questioned whether it was lawful for another Cleveland sports team to use that same moniker.
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 parties’ history of negotiations about the Guardians name. According to the complaint, the roller derby team began operating in Cleveland in 2013 and secured an Ohio state trademark registration for CLEVELAND GUARDIANS in January 2017. The roller derby team alleged that in June 2021, the MLB team told the derby team that it was considering “Guardians” as one of its potential new names. According to the derby team, the MLB team requested copies of the derby team’s jersey and other intellectual property to determine if the MLB team was interested in acquiring it. The derby team provided images of its green and black logos, which include the letter “G” topped by a winged helmet, the phrase “CLEVELAND GUARDIANS” with a winged “G,” the phrase “CLEVELAND GUARDIANS” with the helmeted head of a Guardians statue, and a standalone helmeted Guardian head.
The complaint states that the roller derby team grew concerned about the risks of reverse confusion that could result from the MLB franchise rebranding as the Guardians, including the possibility that MLB fans would think that the roller derby team stole the Guardians name—that is, if any mention of the roller derby team could survive the inundation of MLB-related Guardians content online and on social media. The roller derby team thus offered to sell its domain name and intellectual property to the MLB team but rejected what it deemed a “nominal” amount. 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-character mark CLEVELAND GUARDIANS covering apparel and merchandise related to roller derby (and expressly not related to baseball, softball, or related mascots or stadiums). But the MLB team had already filed an application for CLEVELAND GUARDIANS with the U.S. Patent and Trademark Office (USPTO) on July 23, 2021, the same day it announced its name change. The MLB team’s application covers various products, including toys, software, key chains, and paper goods. In its complaint, the roller derby team claimed that the MLB team lied to the USPTO when it affirmed in its application that it was not aware of any other person holding the right to use the CLEVELAND GUARDIANS mark in connection with the goods listed in that 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 mark filed in Mauritius. Filed two months before the MLB team approached the roller derby team, the application in Mauritius gave the MLB team the benefit of a few months of relative secrecy due to the difficulty of searching the Mauritius database online for pending trademark applications. The MLB team followed a strategy sometimes used in other high-profile name changes of first filing in a country where the trademark database is difficult to search. This approach allows the owner to claim priority from an earlier date while maintaining secrecy before its grand unveiling. By contrast, new trademark applications in the USPTO are searchable online almost immediately.
For the roller derby team, the MLB team’s adoption and use of CLEVELAND GUARDIANS constituted unfair competition under Section 43(a) of the Lanham Act and trademark infringement, unfair competition, misappropriation, and deceptive trade practices under Ohio law, according to the complaint. The roller derby team also alleged that the MLB team’s new “Winged G” logo was remarkably similar to the roller derby team’s Winged G logo and noted that the Winged G logo was among those that the roller derby team had sent to the MLB team during negotiations. That said, the parties’ respective “Winged G” logos have noticeable differences. For example, the roller derby logo consists of a white letter G outlined in green, with a green and white winged helmet sitting on top of the G. On the other hand, the MLB “Winged G” logo included in the complaint consists of two red “G”s with white wings on either side of a baseball.
On November 16, 2021, less than a month after the lawsuit was filed, the roller derby team and the MLB team issued a joint statement announcing that they had reached “amicable resolution” to the dispute that allows both parties to continue using the Guardians name. Presumably, the MLB team agreed to pay more than a “nominal” amount to the derby team regarding the MLB’s planned use of the GUARDIANS name.
Although the parties have not disclosed the terms of settlement, the public will be able to deduce some of the terms based on what is happening in the marketplace. For example, the roller derby team’s website is still located at the same address, while the MLB team’s website is located here, which suggests that the parties likely agreed that the derby team would keep the domain name, at least for now.
The parties’ respective branding elements and color schemes will likely play an important role in distinguishing the teams and reducing potential confusion among consumers. As the MLB team declared during its July 2021 rebranding announcement, it continues to use its hallmark red, white, and blue colors. The MLB team’s signature stylized “C” appears in red or blue, and its website is red. Similarly, the current merchandise offerings from the MLB team include blue, red, gray, and white apparel, white hats, with the red and white “Winged G” logo and GUARDIANS name. By contrast, the derby team’s CLEVELAND GUARDIANS logo and Winged G logo are green and white, and its website is primarily black. For baseball fans, the continuity of the color scheme will likely help to preserve the team’s identity while minimizing confusion with the green and white color scheme of the derby team.
Although the derby team alleged in its complaint that its supporters were concerned about confusion between the two teams, it is unclear whether consumers would have actually confused a Major League Baseball team and a local roller derby league based on the shared GUARDIANS name. Although both are sports teams, fans of the respective teams would arguably be familiar with the respective logos and color schemes and would not be likely to believe the MLB team began using green or that derby team began including a baseball with its logo, for example. Further, any potential confusion would quickly be dispelled by viewing the parties’ websites or social media accounts, each of which specify the sport and organization. Obviously, an agreement permitting both teams to use GUARDIANS would have been based on the parties’ determination that confusion was unlikely based on whatever safeguards were put into place.
This tale of two sport-team Guardians seems to have bridged the divide, as each team can share the Guardians name while paying homage to the historic Cleveland statues.
Join the Discussion
16 comments so far.
AnonDecember 21, 2021 07:10 am
Likelihood of confusion (one of the foundations of an otherwise grab-bag of legal claims) remains – no matter the intent of the two marks’ holders, and cannot be ‘erased’ by any goodwill or decision to ‘divvy’ up the market between two different sports (if the goods claimed are in categories for both teams).
The teams (and perhaps the authors here) seem to have forgotten that “protect the consumer” is an important aspect of trademark law.
It is entirely possible that the roller derby team has opened a Pandora’s box, and that the Federal Trademark for the baseball team is now tainted.