Cleveland, it seems, is big enough to have two Guardians.
In the wake of the Ohio flat-track roller derby team suing the erstwhile Cleveland Indians baseball team in federal court last month for trademark infringement, the two teams on Tuesday announced they had reached “an amicable resolution.” Both teams can use the Guardians name. It is unclear from the announcement if the baseball team paid or otherwise compensated the roller derby team.
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The resolution, which could have been reached before the two teams battled each other in federal court and at the U.S. Trademark and Patent Office, will enable the baseball team to sell merchandise and apparel without worry of infringement and potential monetary damages. The team, which officially changed its name at the end of the 2021 MLB season, had postponed the scheduled launch of its sale of Guardians products on Monday.
As previously detailed on Sportico, the baseball team—then called the Indians—was first to file a trademark for the Cleveland Guardians name. Yet U.S. trademark law is largely governed by a “first-to-use” rather than “first-to-file” basis, and the roller derby team has used Guardians for more than seven years, while the baseball team only began to use Guardians after the 2021 MLB season ended.
Had the legal dispute persisted, a key factor would have been the likelihood of consumer confusion by two teams having the same name and related impact on the sale of their merchandise and apparel. While both are sports teams, their sports are different. Also, one is a pro team worth $1.375 billion while the other consists of amateur athletes who have other occupations.
While the settlement ends the dispute, a fair question to ask is why the Guardians/Indians allowed the dispute to publicly surface in the first place. The roller derby team complained that the Indians opted to “surreptitiously” file a trademark application in the tiny island of Mauritius—a move most likely intended to establish a priority date for a U.S. trademark application—rather than reach out to the roller derby team. The roller derby team also claimed that the Indians only offered to pay a nominal amount for the roller derby team pledging to rebrand itself.
Although rare, cities have featured multiple teams with the same name. One prominent example is St. Louis, home to the NFL and MLB Cardinals teams from 1960 to 1987.
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