US baseball team sued over ‘Cleveland Guardians’ TM

A major US baseball league team is facing a trademark infringement lawsuit by a Cleveland-based roller derby team over its plans to change its controversial name to the ‘Cleveland Guardians’.

The baseball club announced in July that it was changing its name beginning next season, after more than 100 years of using the name, the ‘Cleveland Indians’.

The club announced the  name  change with a video posted on Twitter voiced by Hollywood actor and city native, Tom Hanks.

The move followed decades of criticism from the Native American community, which had accused the club of using  offensive  trademarks for commercial gain.

But a roller derby team, also called the Cleveland Guardians, filed the trademark infringement suit on Wednesday, October 27 at the  US District Court for the Northern District of Ohio.

The filing sought an injunction against the club from taking its ‘Cleveland Guardians’ name,  and argued that “two sports teams in the same city cannot have identical names,” and that “there cannot be two ‘Cleveland Guardians’ teams in Cleveland, and, to be blunt, plaintiff was here first”.

Secret filings

According to the complaint, the baseball club owners knew the Guardians roller derby team existed months before announcing the name change, and the club’s lawyers made secret trademark filings to try to hide its intent to take the name.

The roller derby team asserted that it owns the Cleveland Guardians trademark rights, and just because the baseball club is a billion-dollar franchise doesn’t mean it can just take and use whatever name it wants.

“Major league baseball would never let someone name their lacrosse team the ‘Chicago Cubs’ if the team was in Chicago, or their soccer team the ‘New York Yankees’ if that team was in New York—nor should they,” said Christopher Pardo, a partner at Hunton Andrews Kurth and lead attorney for the plaintiff.

“The same laws that protect major league baseball from the brand confusion that would occur in those examples also operate in reverse to prevent what the Indians are trying to do here. By taking the name ‘Cleveland Guardians’ overnight, the Indians knowingly and willfully eviscerated the rights of the original owner of that name—the real Cleveland Guardians,” he added.

When the roller derby team complained to the baseball franchise, the team was offered a “nominal amount” to acquire its IP rights, including its social media accounts and the valuable www.clevelandguardians.com domain name, the complaint said.

“As a nonprofit organisation that loves sports and the city of Cleveland, we are saddened that the Indians have forced us into having to protect the name we have used here for years,” said Gary Sweatt, the owner of the roller derby team in a statement.

“We know we are in the right, however, and just like our athletes do on the track, we will put everything into this effort at the courthouse.”

Severe repercussions

According to the derby roller team, the repercussions of the baseball club’s planned change to ‘Cleveland Guardians’ have already been severe.

These allegedly adverse effects include the refusal of merchandise suppliers to work with the team, in the belief that the roller derby team is violating the rights of the baseball club.

The derby roller team further held that its website, www.clevelandguardians.com, which it uses in part to sell Cleveland Guardians-branded merchandise to support the team’s nonprofit purpose, has repeatedly crashed due to traffic from visitors who assume the site is associated with the baseball team.

Commenting on the suit, Jason Bloom, partner and head of the copyright practice at  Haynes Boone, said the case highlighted the importance for sports teams and other enterprises to thoroughly vet new names when rebranding, whether due to social pressure or for other reasons.

“The country music group Lady Antebellum ran into a similar issue after it changed its name to Lady A, which happened to be a name used for 30 years by a blues singer.

“While changing outdated or offensive names is generally good for an organisation’s public image, some of the reputational benefits can be lost when the new name appears to trample on the established trademark rights of another party,” said Bloom.

The baseball club’s rebranding efforts is part of a cultural shift that has seen organisations and institutions worldwide come under increased pressure to remove offensive trademarks and find alternative brand names.

Amid this climate, the NFL’s Washington Redskins football team became the  Washington Football Team in summer 2020; and HBO Max began streaming the film “Gone With the Wind” with a disclaimer that the film “denies the horrors of slavery”.

Mark Sommers, partner at Finnegan, noted that public opinion had justifiably forced Cleveland Indians’ name change, but that team’s alleged manner of acquiring its new trademark was likely to face further scrutiny.

“The bad news that the lawsuit delivered was not necessarily that a determination of a likelihood of consumer confusion will be made between these two uses of Cleveland Guardians (the standard of trademark infringement), but that the engagement and discourse between the parties prior to the lawsuit will be placed under a spotlight,” he said.

These types of interactions, he explained, often colour the court’s decision.

“Major professional sports team name changes are magnets for wanted and unwanted attention. As with any high-profile brand owner, the prospect of being sued for trademark infringement is an inherent risk, he added.

“Case precedents involving sports team renamings will not control the decisions to be made in the Cleveland Guardians case. What those cases teach us is that a name change is a difficult process fraught with problems, as there are very few perfect names, only better or lesser ones—the decade-long saga of the disparaging Washington Redskins name speaks to that,” concluded Sommers.

To explore this issue further, watch the World IP Review webinar “ Trends & practical examples of evolving moral standards in trademark protection”, where  IP lawyers from  Browne George Ross O’Brien Annaguey & Ellis discuss post-COVID-19 trends in the attitudes towards “offensive” trademarks in the US.