CLEVELAND — The Cleveland Guardians roller derby team filed suit Wednesday against the city’s Major League Baseball team, seeking to block the club from using the same name.
The federal lawsuit was filed three months after officials with the baseball team, known since 1915 as the Indians, announced plans to adopt the Cleveland Guardians moniker beginning in the 2022 MLB season.
In court records, attorneys for the roller derby team said that having the two teams share a name has already caused “chaos” and “confusion.” They pointed to messages sent to the Guardians on social media but meant for the baseball team and cited problems with merchandise suppliers, “some of whom initially refused to fulfill orders for Cleveland Guardians merchandise because they believe the Indians hold exclusive rights to the name and thus considered Cleveland Guardians’ official merchandise as akin to counterfeit goods.”
The roller derby team sued for damages and an injunction to stop the baseball team from using the Cleveland Guardians name.
“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,” Christopher Pardo, an attorney representing the Cleveland Guardians roller derby team, said Wednesday in a statement. “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.”
In a complaint, attorneys for the Guardians said the co-ed roller derby team has operated under its name since 2013 and that its representatives formally registered the name with the Ohio Secretary of State in 2017. The Guardians have promoted the name on merchandise and online since 2014. Attorneys for the team argued the distinction gives the Guardians “common law” trademark rights.
The baseball team filed a trademark application for the Cleveland Guardians name in April from the island nation of Mauritius. The Guardians’ attorneys wrote that, at the time, the team had to have known the name was already taken.
“It is inconceivable that an organization worth more than $1B and estimated to have annual revenues of $290M+ would not at least have performed a Google search for ‘Cleveland Guardians’ before settling on the name, and even a cursory search would have returned (the) plaintiff’s website … as the first ‘hit,’” attorneys for the Guardians wrote in the complaint.
The roller derby team was contacted by officials with the baseball team in June and told that the Cleveland Guardians name was being considered. Officials with the baseball team asked for pictures of the Guardians’ jerseys and other intellectual property. Days later, the team’s principal, Gary Sweatt, reached out to the baseball team to offer to sell the team’s rights to the Cleveland Guardians name and rebrand.
“The Cleveland Guardians are a non-profit organization, meaning any money earned from selling those rights would be used to further the team’s not-for-profit purpose,” attorneys wrote in the complaint. They added that the team uses funds “to support the organization, including by providing funding for training its skaters and for hosting community events.”
Attorneys said officials with the Cleveland baseball team “offered to pay a nominal amount, likely no more than (15) minutes of annual team revenue,” prompting Sweatt to reject their offer and come back with a counteroffer. However, attorneys said baseball team representatives never responded.
In July, one day before the Indians announced their planned name change, the team filed federal trademark applications claiming the exclusive right to use the Cleveland Guardians name for goods and services, which included the use of the name on jerseys and shirts. At the time, team representatives attested that they knew of “no other person” who had the right to use the name for similar purposes.
“That was a lie,” attorneys wrote in the complaint.
Negotiations between the Cleveland Guardians and the baseball team resumed following the MLB team’s July 23 announcement but broke down on Tuesday, according to the complaint.
“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,” Sweatt said Wednesday in a statement. “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.”
Cleveland’s baseball team has 21 days to respond to the suit. Trademark lawyers told Reuters that the case would likely be settled, with the Indians paying to claim the Cleveland Guardians name from the roller derby team.
“There is no blanket rule in trademark law that two teams, even in professional sports, cannot have the same name,” said Michael Hobbs, a partner at Troutman Pepper Hamilton Sanders, told Reuters.
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