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Cleveland Guardians roller derby team files lawsuit over Cleveland Indians name change

The Guardians.jpg
Posted at 10:23 AM, Oct 27, 2021
and last updated 2021-10-27 18:49:47-04

CLEVELAND — The Cleveland Guardians, the long-running roller derby team based in Cleveland since 2013, has filed a lawsuit in U.S. District Court for the Northern District of Ohio to block the Major League Baseball Franchise the Cleveland Indians from taking its name. As part of the lawsuit, the roller derby team alleges the Indians franchise infringed upon the roller derby team's trademark in addition to its "surreptitiously filed" trademark application for the Guardians moniker through the obscure island nation of Mauritius.

The roller derby team said in the lawsuit that it has ‘common law’ trademark rights based on a priority use in Northeast Ohio that dates back to early 2013 and 2014. The team was formed in 2013 and formally registered with the State of Ohio in 2017. In the years since its inception, the team, which operates as a non-profit, has sold merchandise to fund team activities. Additionally, the team owns the domain for www.clevelandguardians.com, and also has Cleveland Guardians-branded social media pages. According to the lawsuit, the roller derby team asserts that it is inconceivable that the Indians franchise was unaware that the Cleveland Guardians roller derby club existed.

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Ohio Secretary of State trade name registration.

"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 LLP 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.

"As a non-profit of relatively limited means, that is devastating to them. But at the same time, it doesn’t mean that what they own has no value."

In June, members of the Indians front office contacted the owner of the roller derby club to notify them that the franchise was considering the Guardians moniker and requested examples of some of the roller derby team's intellectual property, including jerseys and logos, according to the lawsuit. Attorneys representing the Indians franchise said that they would confer with their clients and discuss whether they had an interest in acquiring the roller derby team's intellectual property.

The principal of the roller derby team realized that it would be impossible for the club to continue using the Guardians name if the baseball team were also of the same name, the lawsuit states. Furthermore, any online news and references to the roller derby team would be lost in the online chatter about the far-more-famous baseball team. The principal of the roller derby team then offered the baseball team an opportunity to purchase the intellectual property and the proceeds of which would be used to further the non-profit roller derby team's activities. The Cleveland Indians offered the roller derby team a "nominal amount" and announced the name change the following month. The two parties have been in discussions since June but apparently reached an impasse earlier this week.

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The Cleveland Guardians website.

The lawsuit claims the Cleveland Indians knew about the Cleveland Guardians before deciding to adopt the identical name.

"We know the law is on our side. The question really is there a way to get this resolved short of a judge enjoining the Cleveland Indians from inappropriately using this name?" Pardo said. "My clients do not want to be in court over this. They wanted this resolved a long time ago. They were shocked, they were horrified and since that happened, they feel like everyone has been trying to pull one over on them. At some point, they were left with no recourse other than to go to court."

Christa Laser, an associate professor of law at the CSU's Cleveland-Marshall College of Law, said trademark law typically allows for similarly-named products to existing in the marketplace so long as the products are in clearly separate classes of goods. That won't be the case in the spat between the roller derby and baseball teams, however, especially considering both entities have been or have an intent to use their trademark in apparel sales.

"It’s an interesting case," Laser said. "The core issue when it comes to trademark law is their confusion or is their potential confusion. When you have very different classes of goods, there’s not that confusion. But when you have a very narrow class of goods like sports, or perhaps if you are looking at roller derby and baseball, that is something that you might get more consumer confusion. The big question is going to come down to who used it first in apparel? Did the roller derby team start selling t-shirts and things like that before the [Indians' trademark application] was filed or were their first sales of t-shirts done after that?"

Pardo said the Indians' name change has already created confusion in the marketplace, pointing to the fact that the roller derby team's website crashed under intense web traffic on the day of the Indians' announcement. Additionally, the roller derby team frequently receives messages on social media from baseball fans, some of whom have accused the roller derby team of stealing the baseball team's name.

"[The roller derby club's owners] are upset. They feel hurt. They feel slighted. They feel wronged. They feel abused. They are a not-for-profit organization that is out there trying to do good for the community and they’re getting beaten up by one of the most prominent hometown teams — in their hometown."

The roller derby team also applied for federal registrations for the Cleveland Guardians and its Winged Man logo, which both applications are pending.

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The Cleveland Guardians roller derby logo and the Cleveland Guardians baseball team logo.

When the Indians contacted Cleveland Guardians that it was one of the names they were considering, Gary Sweatt, owner of the team, sent the Indians organization pictures of their jerseys and other intellectual property, including logos, to show how the Guardians were using its team name.

Sweatt reached out to the Indians again and offered the Indians to acquire the name and rights, but the Indians only “offered to pay a nominal amount.”

The Cleveland Guardians allege in the lawsuit that since the Indians announced its name change, the team’s website continues to crash from the number of visitors who think the site is associated with the baseball team.

“As a nonprofit organization 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 Guardians Roller Derby. “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.”

The Cleveland Indians have released the following statement:

“We have been and continue to be confident in our position to become the Guardians.  We believe there is no conflict between the parties and their ability to operate in their respective business areas.”

Read the full lawsuit here.

RELATED: Cleveland Indians changing name to Guardians

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