A roller derby team filed a trademark application for "Cleveland Guardians" on July 27.
The filing was made 4 days after the @Indians announced the team would be renamed the "Cleveland Guardians."
This is why the filing is significant.
[A thread]
#clevelandguardians
The filing was made 4 days after the @Indians announced the team would be renamed the "Cleveland Guardians."
This is why the filing is significant.
[A thread]
#clevelandguardians
[2]
The roller derby's trademark filing for "Cleveland Guardians" was focused on merchandise items.
These items overlap the items claimed in the @Indians' trademark filing for "Cleveland Guardians."
Specifically, class 16 (bumper stickers) and class 25 (clothing).
The roller derby's trademark filing for "Cleveland Guardians" was focused on merchandise items.
These items overlap the items claimed in the @Indians' trademark filing for "Cleveland Guardians."
Specifically, class 16 (bumper stickers) and class 25 (clothing).
[3]
In its trademark application, the roller derby team also claimed that it has been using the Cleveland Guardians trademark to sell merchandise since 2014.
If true, this would give the roller derby team "common law" trademark rights extending back to 2014.
In its trademark application, the roller derby team also claimed that it has been using the Cleveland Guardians trademark to sell merchandise since 2014.
If true, this would give the roller derby team "common law" trademark rights extending back to 2014.
[4]
The roller derby team could use these "common law" trademark rights to file a formal opposition against the @Indians' trademark filings for the "Cleveland Guardians" name AND/OR to sue the @Indians in federal court for trademark infringement.
The roller derby team could use these "common law" trademark rights to file a formal opposition against the @Indians' trademark filings for the "Cleveland Guardians" name AND/OR to sue the @Indians in federal court for trademark infringement.
[5]
That said, the roller derby team would need to prove it had continuous sales of merchandise since 2014 to have a proper "common law" priority date.
If the team only sold shirts in 2014 and nothing since then, any claim of "common law" trademark rights would likely fail.
That said, the roller derby team would need to prove it had continuous sales of merchandise since 2014 to have a proper "common law" priority date.
If the team only sold shirts in 2014 and nothing since then, any claim of "common law" trademark rights would likely fail.
[6]
Moreover, the roller derby team's website stopped posting updates in 2018 and only resumed posting updates (announcing a 2022 season) after the @Indians announcement that it would be changing names to the Cleveland Guardians.
Moreover, the roller derby team's website stopped posting updates in 2018 and only resumed posting updates (announcing a 2022 season) after the @Indians announcement that it would be changing names to the Cleveland Guardians.
[7]
Under the Lanham Act (federal trademark law), if the owner of a trademark stops using a trademark without intent to resume use, any trademark rights are considered abandoned.
Under the Lanham Act (federal trademark law), if the owner of a trademark stops using a trademark without intent to resume use, any trademark rights are considered abandoned.
[8]
Therefore, if there are emails (or other evidence), which indicate the team was shut down in 2018, the @Indians would have a strong case to refute any "common law" claim being made.
Such emails typically come out in discovery.
Therefore, if there are emails (or other evidence), which indicate the team was shut down in 2018, the @Indians would have a strong case to refute any "common law" claim being made.
Such emails typically come out in discovery.
[9]
The @Indians "priority date" in the Cleveland Guardians name is April 8, 2021.
This is the date they filed a trademark application for the name in the Republic of Mauritius.
The @Indians "priority date" in the Cleveland Guardians name is April 8, 2021.
This is the date they filed a trademark application for the name in the Republic of Mauritius.
[10]
By filing the trademark application offshore, the @Indians were able to keep the filings a secret.
A treaty called the Paris Convention allows the team to post-date the US filings to the filing date in the Republic of Mauritius.
By filing the trademark application offshore, the @Indians were able to keep the filings a secret.
A treaty called the Paris Convention allows the team to post-date the US filings to the filing date in the Republic of Mauritius.
[11]
So, as you can see, the first point of contention in any trademark dispute between the @Indians and the roller derby team would be "who has priority on the trademark."
So, as you can see, the first point of contention in any trademark dispute between the @Indians and the roller derby team would be "who has priority on the trademark."
[12]
Does the roller derby team have priority given their "use" of the trademark since 2014?
Or, did the roller derby team abandon the trademark so that the @Indians priority date of April 8, 2021 supersedes any recent activity by the roller derby team?
Does the roller derby team have priority given their "use" of the trademark since 2014?
Or, did the roller derby team abandon the trademark so that the @Indians priority date of April 8, 2021 supersedes any recent activity by the roller derby team?
[13]
All that said, there is also the question of whether or not the teams could co-exist.
Many sports teams share the same name but play different sports or at different levels.
All that said, there is also the question of whether or not the teams could co-exist.
Many sports teams share the same name but play different sports or at different levels.
[14]
In order for there to be a finding of trademark infringement, consumers would have to be confused by the different teams (one roller derby, one baseball) both operating as the "Cleveland Guardians."
In order for there to be a finding of trademark infringement, consumers would have to be confused by the different teams (one roller derby, one baseball) both operating as the "Cleveland Guardians."
[15]
It seems unlikely that someone would accidently buy merchandise or attend a roller derby game when they are actually trying to go to a Major League Baseball game.
It seems unlikely that someone would accidently buy merchandise or attend a roller derby game when they are actually trying to go to a Major League Baseball game.
[16]
That said, the names are identical. So maybe some people would get confused.
That said, the names are identical. So maybe some people would get confused.
[17]
It will be interesting to see how this plays out.
Trademark cases are very fact intensive. So the facts really matter. And we don't have all the facts yet.
Grab your popcorn because more is likely to come out in the following weeks.
It will be interesting to see how this plays out.
Trademark cases are very fact intensive. So the facts really matter. And we don't have all the facts yet.
Grab your popcorn because more is likely to come out in the following weeks.
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