CLEVELAND, Ohio – Social media is still buzzing over the Cleveland Indians’ choice of the Guardians name, since a roller derby team seems to already bear the moniker – and website.
But whether that poses any problems for the Major League Baseball club remains to be seen.
The team could very well have already obtained trademark protection for the new name. Filings with the U.S. Patent and Trademark Office indicate attempts by others to claim the name dating from last year were withdrawn last week after the team objected.
The baseball club may also have worked out an agreement with the Cleveland Guardians team affiliated with Cleveland Men’s Roller Derby.
Neither team has responded to requests for comment.
Even if there is no agreement, the duplicated name may not matter for a variety of reasons, said Andrew Geronimo, a law lecturer and director of the First Amendment Clinic within the Milton A. Kramer Law Clinic Center at Case Western Reserve University School of Law.
Almost immediately after the Indians announced their new name Friday there were posts on Twitter asking whether the team had done its homework and speculating trouble was on the way.
“How much will the roller derby Cleveland Guardians demand that the baseball Cleveland Guardians pay for http://ClevelandGuardians.com and all Guardians social media accounts?” sports attorney Dan Lust asked on his @SportsLawLust Twitter handle.
More than 100 commenters on the Cleveland Guardians Roller Derby page on Facebook asked questions such as:
- So, Cleveland is going to have two teams with the same name?
- Where can we buy T-shirts? It will be the only Guardians T-shirt I will ever buy.
- Do you guys have this name and logo Trademarked or are you going to teach Tito [Francona, Indians manager] to rollerblade?
Bryant Street Sports LLC of New York did seek trademark protections for the name Cleveland Guardians in 2020. But the Indians objected to the application this month when the public comment period opened. The filing was withdrawn July 21.
“I sort of took that to mean that the team had worked out their differences,” Geronimo said. His hunch is that given the size of Major League Baseball and the legal expertise at its disposal, the team likely has already sewn up any loose ends.
The Indians franchise may also have filed its own request to trademark the new name, trademark attorney Marsha Gentner of Dykema Gossett PLLC told Law360.
Formal application to the federal government is not required to establish trademark protections. Using a trademark with goods or services could establish trademark ownership but registering it with the federal government can offer broader protections.
The purpose of the trademark laws is to avoid confusion in the marketplace, Geronimo said. But two businesses could have similar names without trademark problems if their goods and services are very different.
Apple Inc., the technology company, for example, is a completely different type of business than Apple Records. The differences between Major League Baseball and a roller derby team could be viewed similarly, Geronimo said.
“Those two things might be so different that you could make some argument that there would be no confusion,” Geronimo said. The classes of goods could be so different that it doesn’t matter.”
The law also puts weight on actual use of the trademark. Just applying for federal recognition of a name isn’t enough, Geronimo said. An applicant needs to show it is in use.
Applications for at least 20 new Cleveland MLB names, including the Cleveland Crowhoppers, Cleveland Squires and Cleveland Citizens, were filed with the U.S. Patent and Trademark Office by enterprising fans or aspiring entrepreneurs seeking trademark protection.
Acquiring rights to a name, though, isn’t a path to riches, Geronimo said. It might yield a settlement from a business seeking to use the name, just as businesses may settle nuisance cases for small amounts of money rather than litigate.
As for the website, if you type in www.clevelandguardians.com, you get a page about a men’s flat track roller derby travel team, with a logo of a winged-helmeted man, resembling the Guardians of Traffic from the Hope Memorial Bridge. That’s also the inspiration for the Major League Baseball team.
Ultimately, the baseball club could acquire that domain name from the roller derby team.
But the team’s current home page isn’t clevelandindians.com. If you type in that address, your search will bounce to an MLB page for the Indians. Major League Baseball houses web pages for all its teams.