Cleveland Guardians: Is It Blank Check Time?

This past Friday, Paul Dolan, the owner and chairman of the Cleveland Indians Baseball Company, LLC, called a news conference to make the official announcement that they are changing the name to the Cleveland Guardians.

Shortly after this announcement, many realized - for the first time - that another sports team in Cleveland, Ohio had been using the "Guardians" name. This was a men’s roller derby team that looks like they have been using this name since 2011, and rightfully owned and used the social media accounts and url associated with the name for some time. The roller derby team made their presence known with posts to ClevelandGuardians.com and their social media after the baseball team made their announcement. So it seems that Goliath thought that David would just fade into the background. Not the case.

Sports Lawyer, Dan Lust, pointed this out and was right on point that acquiring the website and social media accounts from the roller derby team alone could cost a lot.

In addition to likely having to make an agreement with the Cleveland roller derby team about the website and social media accounts, Dolan and Cleveland’s baseball team would also seemingly have to make an agreement to obtain the trademark rights to even use the name. That could be a lot more challenging, not to mention costly, based on what appears to be going on here.

According to the United States Patent and Trademark Office, as of Tuesday, July 27th, there were two "live" trademark applications for the mark CLEVELAND GUARDIANS, covering three separate classes. The three classes are for: 1) Athletic apparel, shirts, pants, jackets, footwear, hats, athletic uniforms; 2) Entertainment in the nature of baseball games; and 3) Licensing of intellectual property rights.

Diving deeper into the trademark system you see that the trademark application for athletic apparel (Serial Number 90383728) was Published for Opposition by the USPTO on July 13, 2021, and then Abandoned by the applicant eight days later on July 21, 2021. If the petition for express abandonment was in time to avoid publication - and the USPTO recognizes this - then the trademark application that was very close to being approved and registered will be denied.

The second trademark application for the rights to the CLEVELAND GUARDIANS name in entertainment and licensing of intellectual property rights would be, in my opinion, the real money maker here. Looking into this trademark application further, it looks like the baseball team has been battling for this trademark since as early as April 13, 2021, by opposing the trademark application with the Trademark Trial and Appeal Board (TTAB).

The Cleveland baseball team filed its Notice of Opposition to trademark application (Serial Number 90052176 ) on April 13, 2021, alleging that the trademark application should be invalidated because they had priority in the mark and for likelihood of confusion; because they did not have a bona fide intent to use the mark and only intended to reserve rights in the baseball team's mark; and for applying to register the trademark with a false suggestion of a connection with person, living or dead, intrusions, beliefs, or national symbols, or brings them into contempt or disrepute, amongst other common law claims.

The main point of their Opposition is that the baseball team has been using CLEVELAND marks since long before July 14, 2020. In that regard, the constructive first use date provided in the trademark application, and because of this long and extensive use of the word CLEVELAND in baseball by the previous team names (CLEVELAND INDIANS, CLEVELAND NAPS, CLEVELAND BLUES and CLEVELAND BRONCHOS), the baseball team argues that the CLEVELAND GUARDIANS application should be denied for the applicant.

Even assuming that this application was made by someone not directly associated with the roller derby team - or even if the application was withdrawn - it's not clear that this resolves all outstanding issues. For example, if the "live" trademark applications were filed by a "squatter" and not someone associated with the roller derby team, the issue of website and social media control would be an entirely separate battle. That might actually be what's occurring here: one battle against a squatter, and another against the roller derby team.

Case in point, there was activity by the roller derby Guardians on ClevelandGuardians.com and Cleveland Guardians social media on July 24th and 25th -- after the baseball announcement occurred!

So the baseball team is just going to allow some other entity to control and indefinitely use these moving forward? Doubtful. This recent flurry of activity seems to indicate that - even if the trademarks are resolved - that the website and social media accounts remain at issue. In other words, the roller derby team still could be in line for a big pay day.

That said, knowing all of the above... why would Cleveland’s baseball team make the decision to choose a name that another Cleveland sports team already had been using for years ? More importantly, if the battle is not truly over, wouldn’t making an official announcement hurt your negotiation position to purchase all of the trademarks, website, and corresponding social media accounts?

Of course, all of this could have been avoided if they simply picked another name.

Usually, these situations arise when a brand or team fails to do any due diligence whatsoever before going public. However, that is not the case here. An article titled, The inside story of how Cleveland Indians became Cleveland Guardians, by Terry Pluto, stated that the name change had been in the works since 2020 and that the Indians were serious about the Guardians name roughly eight to twelve weeks ago. The USPTO records show it was as early as April that they challenged the trademark.

According to the same article, the team conducted its due diligence of the Guardians name and found that “the only significant pro team called “The Guardians” is the New York Guardians of the XFL.” They even reached out and worked out an agreement with Marvel comics to clear use of the name.

Brian Barren, the President of Business for the baseball team stated, "You’re not going to find a name that someone’s not using today…You’ve got to work through agreements with others…Those agreements are like toll booths, and they were fewer on the road to the Guardians than many other names under consideration.” Interestingly, he even stated that trademark concerns were a big factor in why they did not have fan voting as an option for the new name.

So the decision to go directly after the roller derby team for the "Guardians" name was seemingly done on purpose, knowing full well that they would have to make agreements and spend time and money to battle to use the name. Naturally, the baseball team comes with far more resources at their disposal but that, alone, does not and can not guarantee a victory.

At the kickoff baseball Guardians press conference, Dolan noted that, getting "final clearance on the name" was the last piece before the announcement. If you ask me... however... it does NOT look like final clearance should have been given at this stage. The premature showing of their cards likely costs them far more money than they had hoped. The question now becomes how much more money does it cost and whether the stench of the name change wears off in time for opening day.

Zak Kurtz is the Founder and Principal Attorney at Sneaker Law Firm, a boutique business and intellectual property law firm that works with businesses and brands in sports, entertainment. fashion and technology industries. He can be reached at [email protected].