Josh Gerben Profile picture
Oct 27, 2021 8 tweets 4 min read Read on X
The Cleveland Indians have been sued over the team’s planned name change to The Cleveland Guardians.

A roller derby team named the Cleveland Guardians filed the lawsuit earlier today.

The lawsuit makes some juicy claims.

[a thread]

#ClevelandGuardians #ClevelandIndians
The elbows begin flying immediately in the complaint.

In the second paragraph the roller derby team asserts that two sports teams cannot reside in the same city and have the same name.

[2/8]
After coming out of the gate strong, the roller derby team goes on to posit that it has common-law trademark rights in northeast Ohio, going back to late 2013.

[3/8]
The roller derby team claims that it is “inconceivable” that the Cleveland Indians did not know of its existence and trademark rights.

Instead of resolving this issue, MLB is accused of "surreptitiously” filing its own application.

[4/8]
Two months after making an off shore trademark filing, the Cleveland Indians’ lawyers finally reached out to the roller derby team to inform them that they were “considering” the name.

[5/8]
The roller derby team responded, letting the Cleveland Indians know that if the team would like to use the name, it would need to put forth an offer to buy out the rights.

These rights would include the web domain, with the understanding the derby team would then rebrand.

[6/8]
The suit goes on to claim that the Cleveland Indian's buyout offer was "likely no more than fifteen minutes of annual team revenue.”

The roller derby team claims it attempted to negotiate several times, though talks have broken down as of October 26.

[7/8]
The lawsuit ends with the roller derby team asking the courts to stop the Cleveland Indians from using the “CLEVELAND GUARDIANS” name.

[8/8]

• • •

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More from @JoshGerben

Jul 18
An epic trademark battle between NFL quarterbacks is underway.

Lamar Jackson has blocked Troy Aikman's attempt to register a trademark for “EIGHT” with the USPTO.

A thread 🧵

#LamarJackson #TroyAikman #NFL Image
Jackson's legal team recently filed a Notice of Opposition against Aikman's "EIGHT" trademark claiming that...

[2/6] Image
1⃣ Jackson has filed multiple trademarks for the number "8" as it relates to clothing and athletic bags, giving him superior rights in the mark.

2⃣ If registered Aikman's "EIGHT" trademark will cause consumer confusion with Jackson's "8" trademarks.

[3/6] Image
Read 6 tweets
May 24, 2023
The USPTO has denied the trademark application for the NFL's Washington Commanders.

On May 18th, the USPTO issued the denial citing two reasons.

1⃣ An existing trademark for "Commanders' Classic."
2⃣ Pending applications filed by a DC-area man.

A thread 🧵

#HTTC Image
The Washington Commanders' trademark was refused because of an existing registration for:

"Commanders' Classic"

This is the name of a yearly college football game between the Air Force and Army teams.

[2/6] Image
The second reason the Commanders' trademark was refused was due to pending applications for:

1⃣ Washington Space Commanders
2⃣ Washington Wolf Commanders

The filings were made by Martin McCaulay, a DC-area man, who filed the trademarks trying to guess the new team name.

[3/6] Image
Read 6 tweets
Oct 18, 2022
Luka Doncic and his Mom are in a legal battle for control of his trademarks.

In September, Luka filed to cancel a trademark his Mom owns for "LUKA DONCIC 7."

Last week, his Mom fired back, seeking to dismiss the legal proceeding on technical grounds.

[1/7]
#lukadoncic Image
The legal dispute began last month.

For years, Luka consented to his Mom owning trademark registrations for his name.

However, that arrangement appears to have changed as Luka has filed a "Petition to Cancel" a trademark registration his Mom owns for "Luka Doncic 7."

[2/7]
Luka's "Petition to Cancel" indicates that:

1. He was young and relied on his Mom for help when he consented to her owning his trademarks.

2. He is now trying to file trademarks under his own company which have been blocked by the previous registration owned by his Mom.

[3/7]
Read 7 tweets
Jul 19, 2022
Well, this is awkward.

The company that owns Shaq's trademarks (Authentic Brands Group) has opposed his son's trademark filing for "SHAQIR O'NEAL."

How on earth did this happen?

#Shaq
#Trademarks

A thread 🧵
[1/8]
The Notice of Opposition starts by claiming that Authentic Brands Group ("ABG") holds all the rights in Shaq's name, image and likeness.

This is true.

Shaq did transfer all of these assets to ABG and is a shareholder in the company.

[2/8]
Authentic Brands Group goes on to claim that the trademark for SHAQIR O'NEAL is "confusingly similar" to trademarks it owns for Shaq.

[3/8]
Read 8 tweets
Jun 22, 2022
The Ohio State University has successfully registered a trademark for "THE."

The registration was just issued on June 21st by the USPTO.

The application was filed back in August 2019. So why did it take 3 years to get approved?

A thread🧵
The USPTO refused Ohio State's trademark application for the word "THE" on Sept 11, 2019, for two reasons:

1. The trademark was "merely ornamental."

2. The clothing company Marc Jacobs had filed an application for "THE" several months earlier.

tsdr.uspto.gov/documentviewer…

[2/5]
Ohio State responded by:

1. Showing the USPTO that it was not using the trademark in a mearly ornamental manner, and

2. Opposing Marc Jacobs' trademark application for the word "THE."

ttabvue.uspto.gov/ttabvue/v?qt=a…

[3/5]
Read 6 tweets
Mar 8, 2022
I'm a trademark attorney who has assisted clients in registering 7,500+ trademarks on 6 continents.

Russia has threatened to "suspend" the trademark and patent rights of foreign companies that are ceasing operations in Russia.

Why is that significant?

A thread.
#UkraineRussia
Russian state media is reporting that the Russian government may suspend the trademark and patent rights of companies that are ceasing operations in Russia or in connection with "sanctioned goods."

[2/11]
This means that Russians might be able to use Fortune 100 brands and patents without the threat of litigation.

And it's significant because such a threat pressures the companies, who owe a duty to their shareholders, to think twice about further isolating Russia.

[3/11]
Read 11 tweets

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