Cleveland Guardians Baseball and Cleveland Guardians Roller Derby Settle Trademark Lawsuit

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.

What Did Cleveland Roller Derby Argue in the Lawsuit?

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.

Would Two Teams Using the Same Name Cause Consumer Confusion?

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:

• The similarity in sound or appearance
• The fame of the prior mark
• Any instances of actual confusion
• The variety of goods on which the trademark is used
• Various other factors

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.

Contact an Experienced Trademark Attorney

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.