A little-known amateur men’s roller derby team may turn out to be an unlikely winner from the Cleveland Indians’ decision to change their name to the Guardians.
Yahoo Sports reached out to both Cleveland teams to ask if they had communicated with each other since the MLB franchise announced its name change last week. An Indians spokesman declined comment on Monday for legal reasons. A representative from the roller derby team responded via Facebook messenger, “We sincerely appreciate you reaching out to us. Unfortunately, we are unable to comment on anything at this time.”
Attorneys who specialize in trademark law interpret that mutual silence as evidence that either a deal is in place or both sides are in negotiations. As California-based attorney Steve Vondran put it, “When you get answers like that, usually the parties want negotiations to be confidential or they’ve already discussed it and resolved it.”
How much would the Indians shell out to avoid the hassle of a potential trademark infringement lawsuit? Or to buy clevelandguardians.com and the roller derby team’s Instagram and Facebook accounts? Some of the trademark attorneys declined to speculate. Others suggested that the roller derby team could receive a six-figure payout, a sum that’s significant but not extravagant.
“It’s probably worth it to pay the roller derby team something reasonable so that there’s not a public relations nightmare and there’s not any bad will around the new name,” Washington D.C. trademark attorney Josh Gerben told Yahoo Sports. “There’s certainly value in making sure that everyone is happy.”
These Cleveland Guardians already played games
The Cleveland Guardians are a men’s flat-track roller derby team that since 2016 has competed in the Men’s Roller Derby Association. On March 7, 2015, they played their first game against an MRDA-certified opponent, a 456-27 loss to the Cincinnati Battering Rams.
A blog post written afterward by a Guardians player quips: “Some might call this a lopsided defeat. I prefer to think we were wearing them down.”
Hannah Zavorek, arena manager for the C.E. Orr Ice Arena in Euclid, Ohio, told Yahoo Sports the Guardians may not be well known but they’re “very much a thing.” The Guardians practiced and played at the arena from 2016-2019, according to Zavorek, before shutting down for the COVID-19 pandemic the past two years.
Trademark attorneys say it’s very likely that the Indians became aware of the roller derby team while doing due diligence on potential new names over the past few months. While the roller derby team doesn’t appear to have registered its name with the United States Patent and Trademark Office, a quick Google search of “Cleveland Guardians” yields their website as one of the first results.
“When they’re doing something as large as changing the name of the team, they’re going to have dotted their ‘I’s’ and crossed their ‘T’s,’” Gerben said. “The chances they were unaware of this are next to zero. Trust me, the team checked Google.”
Once they became aware of the roller derby team, Indians attorneys likely would have assessed the threat of a common law trademark infringement claim. The roller derby club could still have legal protection even without a registered trademark if it could show that it continued to use its name and logo and that a Major League Baseball team also called the Cleveland Guardians would likely confuse consumers.
The first question might come down to how a court viewed the roller derby team’s two-year COVID pause. The team has created sporadic new posts on its Facebook page the past couple years, but, until a post seeking new players for the 2022 season on Saturday, its website hadn’t been updated since 2018.
As for whether the existence of two Cleveland Guardians would cause confusion in the market, there’s evidence on both sides. The roller derby team could argue confusion is inevitable when two teams in the same city have identical names and logos bearing the same words. The Indians could counter that the teams are not only in two different sports but two different stratospheres. The major league club has been a Cleveland fixture for more than a century. Most in the Cleveland market don’t even know the roller derby team exists.
Which side would win in the unlikely event a legal battle reached a courtroom? “No one can tell,” Vondran said, “but it probably isn’t a fight that the Indians want to have.”
“If I counseled the Indians, we would definitely work on a resolution before a trial,” he added.
How will the Cleveland situation be resolved?
Trademark attorneys say the more expensive issue for the Indians could be the domain name and social media accounts belonging to the roller derby team.
In the past, Major League Baseball has aggressively pursued claims against new trademarks that bear a hint of resemblance to team names or logos. As a result, it’s hard for attorneys to imagine the league being comfortable with another Cleveland team, tiny as it might be, owning clevelandguardians.com or corresponding Facebook and Instagram pages.
Sports lawyer Darren Heitner of Heitner Legal told Yahoo Sports that there is “no reason why the Cleveland baseball team should be able to pry the domain name away unless it is willing to fork over a lot of money.”
Heitner said the roller derby team began using the domain name well before the name change and doesn’t appear to have acted in bad faith.
— Darren Heitner (@DarrenHeitner) July 25, 2021
The question that Heitner and others have is why the Indians didn’t resolve this issue before the announcement of their new name last week. Now the public is aware of the other Cleveland Guardians, and their founders appear to be spoiling for a legal fight.
On Sunday morning, the roller derby team updated its Facebook page for the first time since March. The post featured a single image: A green and blue Cleveland Guardians logo with a scowling man wearing a winged helmet.
In the past 36 hours, the post has garnered more than 300 likes and nearly 150 comments. One fan wrote under the post, “Where can we buy T-shirts?! It will be the only Guardians T-shirt I will ever buy.” Wrote another, perhaps a bit hyperbolically: “You are the legal owners of this name for use in athletics. Nobody else has a right to it and the baseball team simply stole it from you.”
Hardly anyone knew the Cleveland Guardians roller derby team even existed a week ago. Now they’re the talk of Cleveland and perhaps poised to cash in.
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