The Cleveland Guardians flat-track roller derby team, who has operated under the nickname for years and has also maintained a social media presence and also owns the Cleveland Guardians website, today filed a federal lawsuit in the Ohio Northern District Court seeking an injunction against the Cleveland Guardians Major League Baseball team, alleging the professional organization violated the rights of their squad with the team's name change.
"A Major League club cannot simply take a smaller team's name and use it for itself," the lawsuit said. "There cannot be two 'Cleveland Guardians' teams in Cleveland, and, to be blunt, Plaintiff was here first."
The Major League Baseball franchise known as the Indians since 1915 announced plans in July to drop the name and rebrand itself as the Guardians in the 2022 season. When the team unveiled its plans for the new name in July, it said it was aware of the Guardians roller derby team. The baseball team said it had taken the proper legal steps to appropriate the name. The lawsuit says negotiations between the derby and ballclub 'broke down' Tuesday, October 26.
“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, the derby team’s lead attorney, said 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. 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.”
It’s been reported that the Cleveland Baseball Team filed its first trademark application to become the Guardians in April. The team’s paperwork was filed from the African island nation of Mauritius to help keep its plans a secret and allow it time to build a rebranding plan and finish the season as the Indians without distraction. The derby team’s lawsuit suggests the move was meant to surprise the derby team.
"When the roller derby team complained to the Indians, the MLB franchise offered a truly nominal amount to buy the team’s intellectual property rights, including its social media accounts and the valuable www.clevelandguardians.com domain name,” Pardo said in a statement.
According to the lawsuit, the roller derby earned "common law" trademark rights based on the priority of use in Northeast Ohio that dates back to late 2013 and early 2014. The derby team, which was established in 2013, has plans for a 2022 season – soon before the Cleveland Baseball Team would adopt the Guardians namesake. They had plans for a 2020-2021 season but it was delayed by the COVID-19 pandemic.
The Cleveland Guardians flat-track roller derby team, established in 2013, has filed a federal lawsuit against the Cleveland Baseball Team over the Guardians nickname. |
The lawsuit also says the baseball team "surreptitiously" filed its trademark application in Mauritius rather than contact the roller derby. Months after the filing, the ballclub contacted the derby acknowledging that they were "considering" the name Guardians and discussed purchasing the intellectual property, the lawsuit says.
Gary Sweatt, the owner of the roller derby team, says in the lawsuit he had concerns about allowing the ball club to also use the Guardian name while still operating the roller derby team as the Guardians. So, Sweatt asked the ball club to "buy out" the rights to the Guardian name and the roller derby team would rebrand.
"When given an opportunity to acquire all the Cleveland Guardians' superior rights (including both Cleveland Guardians name and clevelandguardians.com domain), the Indians only offered to pay a nominal amount, likely no more than fifteen minutes of annual team revenue," the lawsuit says.
The lawsuit says Sweatt rejected the offer and made a counteroffer but the Cleveland Baseball Team never responded. In the meantime, the lawsuit says, the ball club filed a second Mauritius to make a second trademark filing, this time for the logo design. On the day before the baseball team announced the new name, the organization filed two new federal trademark applications in which, the lawsuit says, they claimed no other person or entity had been using the Cleveland Guardians name for merchandise or business. (The Guardians roller derby team had registered with the Ohio Secretary of State in 2017.)
The roller derby team wants the baseball team to advertise and promote that it would no longer call itself the Guardians with "at least as much effort and resources" used to promote the new name, the lawsuit said. It also wants the baseball team to establish a fund equal to what the team spends on advertising and promotions if it continues using the Guardians name so the roller derby team can buy "corrective advertising".
At this time, the Cleveland Baseball Team has not publicly commented on the lawsuit from the Guardians roller derby team. In what felt like a step in the right direction from distancing themselves from the racist nickname they identified themselves with, the team could possibly have to start over from square one. If they do, names like Blues, Naps, Commodores, Spiders, Towers and Presidents all remain viable options.
