Trademark infringement: reaching agreement on team name use

On Behalf of | Nov 22, 2021 | Firm News |

There has been a reckoning in recent decades over the misuse of American Indian names and iconography. Many considered the usage as racist. Most high school and college teams have made changes. While the Washington Football Team is still working on its new name, the baseball team was known as the Cleveland Indians since 1915 announced in July of 2021 that it would change its name to the Cleveland Guardians. However, there was a problem: the local roller derby team already called themselves the Guardians.

A classic case of trademark infringement

This proposed name switch led the roller derby team to file a trademark infringement lawsuit in the U.S. District Court for the Northern District of Ohio, contending that the Guardian name change infringes on the roller derby team’s trademark rights. The non-profit team called itself the Guardians since 2013 and registered the name with the Ohio secretary of state in 2017. It also argued that the baseball team was aware of the name. Nonetheless, the baseball team followed the lead of large companies trying to take a name and use it for itself. Protecting brand identity is a primary benefit of registering intellectual property, but it doesn’t always stop larger businesses from trying to take it, or at least not pay for it.

The owner of the roller derby team saw an opportunity and tried to sell the baseball team rights to its team names and websites, and he invited the MLB team to make an offer. They responded with a nominal amount, which the roller derby team owner rejected and countered with another proposal. While the counterproposal was ignored, the lawsuit delayed the team’s name change.

An amicable settlement

The two sides announced on October 27 that they had an agreement. While the terms were not disclosed, it seems likely that the roller derby team owner will get paid. Speaking of getting paid, the new branding will likely lead to a groundswell in selling Guardian baseball caps, jerseys and other memorabilia. With the holidays approaching, the amicable agreement comes not a moment too soon for at least one team.

It has happened before

This is not the first time two teams in the same town shared the same name. The Cardinals football and baseball teams in St. Louis shared a name from 1960 to 1987. Of course, New York had the Giants baseball and football teams at the same time from 1925 to 1957 – New Yorkers will still hear the term “New York Football Giants” from time to time.