Baseball Versus Roller Derby – Cleveland’s Battle for the Guardians Trademark

by Josh H. Escovedo
The IP Law Blog

On Tuesday, October 26, 2021, Cleveland Roller Derby filed suit against the Cleveland Guardians Baseball Company, LLC, which is the entity formerly known as the Cleveland Indians Baseball Company, over its intent to rebrand the baseball team as the Cleveland Guardians. According to Cleveland Roller Derby’s complaint in the United States District Court for the Northern District of Ohio, there cannot be two Cleveland Guardian teams in Cleveland, and it was the first. As a result, it is seeking an injunction precluding the baseball team from using the trademark. According to Cleveland Roller Derby, a non-profit entity, despite being valued at over $1 billion, the baseball team is trying to bulldoze the roller derby team’s superior trademark rights to the Guardians name.

The complaint indicates that the two teams were in contact before the baseball team announced its rebrand in July 2021. According to the complaint, the baseball team reached out, through counsel, and informed the roller derby team that it was considering rebranding as the Cleveland Guardians, and asked for the roller derby team to send over photos of its jerseys and other uses of its IP. The baseball team allegedly indicated that it would evaluate the information once received and discuss whether it had any interest in acquiring the roller derby team’s intellectual property. So, clearly, the Cleveland Indians knew of the roller derby team’s ownership of the IP and exactly how it was used. That’s an interesting fact to say the least.

The Complaint also alleges that the roller derby team became concerned with the baseball team’s intent to use the IP and reached out to inform the baseball team that if it intended to use the Guardians trademark, it would need to acquire the roller derby team’s rights. To that end, the roller derby team offered to sell its IP, including its domain www.clevelandguardians.com. According to Cleveland Roller Derby, the baseball team responded the same day and offered a nominal amount equal to no more than 15 minutes of the team’s annual revenue. Of course, the roller derby team rejected the offer and issued their own counteroffer. To date, the baseball team has not responded to the counteroffer.

Instead, on July 23, 2021, after the teams had the discussions referenced above, the Cleveland baseball team announced its intent to rebrand for the 2022 season as the Cleveland Guardians. This was announced without acquiring the IP from the roller derby team and without securing any sort of coexistence agreement or license. This news was not well received by Cleveland Roller Derby, and it seems the parties have been unable to resolve their differences since the announcement, resulting in the federal lawsuit being filed on October 26, 2021.

This lawsuit is interesting to say the least. I think that both sides have reasonably strong arguments. For example, the baseball team has a reasonable argument that its use with respect to baseball isn’t going to cause consumer confusion with the roller derby team’s use of the name with respect to roller derby. On the other hand, the roller derby team has a reasonably strong argument that consumers may be confused in the marketplace when buying apparel and others goods and services. It also has a reasonable argument that consumers may ultimately be confused when they are deciding to visit one of the team’s websites or looking to tag one of the teams on social media. In fact, the Complaint references the roller derby team’s website having crashed due to an influx of users looking for information about the baseball team following the rebranding announcement. Not only that, but the roller derby team has expressed a legitimate concern about social media tags related to the roller derby team drowning in references to the billion-dollar baseball enterprise.

Although both sides have persuasive arguments, I’m almost certain we won’t see what a trier of fact thinks of the dispute. Instead, as with most of these situations, it’s more likely that the matter will settle, and likely for more than the Cleveland baseball team would have paid pre-litigation. I could be wrong, as I suspected this case would settle before reaching this point, but I’m fairly confident that this dispute will be put to rest before Spring Training 2022. There is simply too much money involved in the baseball team’s rebranding to leave the dispute to chance.