Which Will Come First, the Injunction or Spring Training?
October 28, 2021 | Daniel J. Donnellon
Guardians Roller Derby v. Cleveland Guardians Baseball Co., LLC
The smart money is likely on the former. This is worse for sports fans in the City of Cleveland than “The Drive” or “The Fumble.” “Two sports teams in the same city cannot have identical names. Major League Baseball would never permit ‘Chicago Cubs’ lacrosse or ‘New York Yankees’ rugby teams to operate alongside its storied baseball clubs and rightly so.” See Complaint, Case No. 1:21-cv-2035 (N.D. Ohio, October 27, 2021). The Complaint, filed in federal court in Cleveland by the “Cleveland Guardians” Roller Derby Club, claims the legendary 107 year-old baseball team knew, or had to know, of their team’s years’ long prior use, and even State tradename registration, of the name “Cleveland Guardians.” And, the baseball team had this knowledge well before they announced the beloved Indians would play in the 2022 season under the same name.
According to the Complaint, “it is inconceivable that an organization worth more than $1B and estimated to have annual revenues of $290M+ would not at least have performed a Google search for “Cleveland Guardians” before settling on the name, and even a cursory search would have returned Plaintiff’s website (www.clevelandguardians.com) as the first “hit.” Complaint, ¶20. “Inconceivable” may seem to be a kind way of describing this oversight, but the Complaint did not pull punches. Indeed, it claims when the Cleveland Indians filed two federal trademark applications on July 22, 2021, they claimed they had the exclusive right to use the name Cleveland Guardians and certified, under penalty of law, that no other person had the right to use the Cleveland Guardians mark. The Complaint states with alarming specificity, “that was a lie.” Complaint, ¶30.
How can the non-profit Roller Derby Club make such a claim particularly under the strictures of federal pleading? Well, it seems two months before filing the U.S. trademark applications, lawyers for the Indians contacted the Cleveland Guardians informing them that they were considering using that moniker and the club sent the lawyers photos of the team’s current jersey design and a collection of other uses of the intellectual property, including the “Winged-G” logo used by the skaters. Remarkably, the graphic artists for the baseball team, who were likely paid more than a colloquial “pretty penny,” came up with a similar design (Complaint, ¶29):
The Indians also claimed in their July trademark applications that they actually had prior use of the name and marks by virtue of an April trademark application that was not filed in the United States, but rather the small country of Mauritius off the coast of Africa. The Indians claimed that they filed in Mauritius to keep the name out of the press until they could finalize arrangements and make a formal announcement. The Roller Derby club, of course, disagrees and claims the offshore filing was done only to give it some claim to priority since the Roller Derby club had not applied for formal trademark protection either in the United States, or Mauritius. Ultimately, the federal court will determine the strength of that argument viz. the club’s claims of common law trademark rights and state trade name registration years before any filing on an island in the Indian Ocean.
To their credit, the Indians tried to buy all the intellectual property rights acquired by the Roller Derby club’s use, but the amount was considered far too low to cover the club’s investment in its merchandise and cost of re-branding under a new name. The two sides apparently had some further discussions but negotiations broke down. One would expect those discussions to continue, perhaps with the assistance of the federal court or a mediator, but the club claims the likelihood of confusion is already palpable even though the baseball team has not yet donned a uniform. For example, the club’s website (www.clevelandguardians.com) typically averaged “no more than a few dozen visits a day,” prior to the Indians’ July 23 announcement. Complaint, ¶35. But, immediately following the Indians’ announcement, the website crashed, and needed to be upgraded, after “roughly one hundred eighty thousand website visits in just a nine-hour period.” Id. (emphasis in original). And, largely thanks to the unconstrained modern social media, fans are claiming the Roller Derby club “stole” the baseball name.
Two predictions on this case: (1) whomever in the Indians organization dropped the ball on the “inconceivable” failure to discover the prior use will announce he’s “taking his talents to South Beach;” and, (2) Chief Wahoo is rolling over laughing in his mascot grave.