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Cleveland’s Major League Baseball team recently settled a trademark lawsuit commenced by the local roller derby team over rights to the name “Cleveland Guardians.” The action arose following the baseball franchise’s decision to change its moniker, the “Cleveland Indians,” after nearly 100 years of use due to concerns that it might have offensive connotations attached to it. However, the roller derby team, which had formed in 2013, argued that the baseball team’s rebranding infringed upon its existing trademark — and there could not be two “Cleveland Guardians” sports teams in the city.
Critically, the lawsuit shed light on an important question that can commonly arise in the sports industry: whether two teams in different sports using the same name would cause fans to be confused.
In its complaint filed in the U.S. District Court for the Northern District of Ohio, the roller derby team argued that it had superior trademark rights to the name “Cleveland Guardians.” It also alleged that the baseball team used deceptive trade practices in connection with the switch, and that consumers would likely be confused when purchasing sports merchandise in the marketplace. In fact, the lawsuit referred to the roller derby team’s website crashing due to users searching for the baseball team following the announcement of the name change.
The complaint stated that both organizations had been in communication before the baseball team’s name change announcement. According to the lawsuit, the baseball team contacted the roller derby team to inform it regarding the rebranding and requested photos of its intellectual property — indicating that the baseball team knew of the derby team’s ownership. While the derby team offered to sell its intellectual property, the baseball team had only offered a nominal amount for it, as alleged in the complaint. The derby team claimed that it issued a counteroffer to which the baseball team did not respond.
Ultimately, both sides reached what was referred to as an “amicable resolution,” allowing each team to continue using the “Guardians” name. While the other terms of the settlement agreement have not been disclosed, the baseball team will continue the process of changing its name and begin selling new merchandise.
Team names in sports are essential — not only for purposes of identity and goodwill, but they also appear on t-shirts, hats, memorabilia, and other merchandise. Critically, a team’s name and logo evoke a sense of community and loyalty among fans. If the same name was used for two sports teams in one city, an argument could be made that fans would likely be confused.
In trademark law, the likelihood of confusion exists when two marks are so similar that consumers would be led to believe they are from the same source. While concerns of consumer confusion give rise to many trademark disputes, specific criteria must be met to constitute infringement. However, a trademark owner does not need to show that there is actual confusion with the two marks — rather, they must demonstrate that consumers likely would not be able to differentiate them.
A number of factors are considered to determine whether there is a likelihood of confusion between two marks. The first thing a court or the Trademark Trial and Appeal Board would evaluate is whether the goods or services in question are related. If the industries do not compete and are in different geographical locations, it is unlikely that consumers would be confused. Additional factors a court would analyze include the following:
Although the “Cleveland Guardians” case settled before the matter was litigated in court, both sides had strong positions. The baseball team had a solid argument that the use of the name would not cause confusion since roller derby is an entirely different sport. However, the roller derby team asserted a good argument that consumers might be confused in the marketplace when purchasing apparel and other goods, or when searching for the team online and tagging it on social media.
Trademarks are critical in any industry, and you must take any legal measures necessary to protect your brand. If you are facing a trademark dispute, a skilled trademark attorney can advise you regarding your legal rights and remedies — and help ensure your brand and bottom line are protected. Located in Ann Arbor, Michigan, the Trademark Lawyer Law Firm, PLLC offers high-quality trademark services to business owners and entrepreneurs for a full range of trademark matters, including litigation, registration, and renewals. Contact us today to schedule a free 15-minute consultation.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.
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