A Cleveland Controversy, Carved From Sandstone

The Cleveland Indians, via Tom Hanks narration, recently announced their name change to the Cleveland Guardians. However, reaction to the name was rather mixed and the team shortly found itself in another naming controversy. This article will provide a general overview of the situation and the relevant trademark law involved.

The Many Names of Cleveland Baseball

Between 1869 and 1889, the team in Cleveland was known as the Blue Stockings and the Forest Citys. Before 1915, other names were used, such as the Spiders, Naps, Bronchos, Buckeyes, and Babes. In 1915, they became the Indians which has lasted more than a century [1]. Now, mired in the controversy of employing a name depicting Native Americans, the team finally decided to change the name.

The name Guardians comes from a set of 4 sandstone pillars, each containing 2 carved out “Guardians” on the Hope Memorial Bridge, just outside of Progressive Field in Cleveland. The Guardians represent “the spirit of transportation,” [2] a fitting ode to Cleveland’s Rust Belt persona. Fitting, but perhaps not original.

A Cleveland Controversy

It quickly became apparent that the Cleveland Guardians already exist, as a Cleveland Men’s roller derby team operating since at least 2013. This is the kind of issue that trademark law seeks to prevent, or at the very least provide a conclusory legal remedy. A brief trademark law review is thus warranted.

Trademark Basics

Trademarks are source identifiers, consisting of a word, phrase, name, symbol, design, or any such combination. Trademark ownership grants certain protections. Those protections emanate from 3 major sources: state common law, state statutory law, and federal statutory law.

Use of an unregistered mark in commerce provides some limited protections. Such protectionary parameters flow from the judicial decisions of the relevant state. Generally, the protections are geographically limited and confined only to where the mark is being used in commerce.

State statutory laws are legislatively adopted laws that provide additional and formal protections for trademarks. Generally, these additional protections extend throughout that state.

The cleanup hitter of trademark law is the Lanham Trademark Act [3], which is the basis for federal trademark protection. Successful trademark registration with the United States Patent and Trademark Office (USPTO) affords national protection of the mark in connection with commerce for the specific classes of goods and/or services identified.

First to Use Doctrine & Filings

Brand protection generally requires federal registration, but the U.S. is still a “first to use” jurisdiction. Meaning, first use of the mark determines superior rights. The rub, unregistered marks or state registered marks are confined geographically, even if used before a similar mark which ultimately registers with the USPTO. The first user generally can continue use of the mark, though use is limited to its existing geographic usage while the federally registered mark has superior rights everywhere else.

Review of Ohio and USPTO records reveals that the roller derby Cleveland Guardians have been using the name since 2013 and own a trade name registration in Ohio on that name.

The Present Dilemma

It is possible for similar unregistered, state registered, and federally registered marks on similar goods and/or services to co-exist, subject to geographical limitations. Both teams have now filed USPTO trademark applications, the baseball team filing first. However, if the Cleveland baseball team is successful in its USPTO application, it is likely that the roller derby team would still have first use rights to the name in Cleveland or perhaps all of Ohio. Therein lies the dilemma. If the baseball team’s registration is successful, yet they cannot use the name in Ohio, what is the point?

Clearance Searches & Strategy

Before a business decides on a name or applies for a trademark, clearance searches serve to mitigate potential issues. It is likely the baseball team conducted a search and discovered the roller derby team’s use. The baseball team’s strategy in moving forward likely comes down to two points: (a) the roller derby team may not have been using their mark in connection with commerce and/or (b) the team is relying on asymmetric legal warfare.

A realties of the legal system is that such controversies are time, energy, and resource intensive. The baseball team may be relying on the belief that the roller derby just does not have the resources to fight. In fact, as Stephanie Weissenburger points out, this near exact situation has occurred on two recent occasions, to roller derby teams no less [4].

The Road Ahead

The USPTO will now conduct a review of the applications. If the baseball team’s mark moves to the “publish for opposition” phase, it appears likely that the roller derby team will challenge the application. There does exist contractual arrangements where the parties can outline co-use of the mark and these agreements can be submitted to the USPTO to prevent a likelihood of confusion or rejection of the applications. However, the USPTO is not bound to these agreements, and none appear to be in place yet.

Given the Covid-19 pandemic, USPTO processing times have slowed to almost 2 years. Meaning, it may be some time before we have a resolution on this matter. For now, Cleveland baseball fans can welcome the Cleveland Guardians, trademark pending, for the 2022 season.

For a deeper dive into this subject, please navigate to: https://www.mareaslegalcounsel.com/insights/cleveland-controversy

Matthew D. Batista, Esq. is the managing attorney of Mareas Legal Counsel, APC in San Diego, CA. He has extensive experience working at the intersection of sports/entertainment and intellectual property law. The firm can be found at mareaslegalcounsel.com and @mareaslegalcounselapc on Instagram.

References:

[1] https://www.si.com/mlb/2021/07/23/cleveland-guardians-name-change-decision-explained

[2] Id.

[3] 15 U.S.C. §§1051 et seq.

[4] https://www.conductdetrimental.com/post/exclusive-roller-derby-exec-explains-baseball-guardians-critical-oversight