“It is inconceivable that an organization worth more than $1billion and estimated to have annual revenues of $290 million plus 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 Plaintiff’s website (www.clevelandguardians.com) as the first ‘hit,’

LOL

The roller derby team should be thanking the baseball team. This is surely the biggest shot of publicity they ever had. How many Clevelanders had even heard of the roller derby team before this?

They will settle of course. Sell the domain name for a million or so, with a rider that the site keeps a tag "if you're looking for roller derby, click here", maybe rebrand the roller derby team as something like "Night Guardians", and everyone walks away satisfied.

They will settle of course. Sell the domain name for a million or so

Not so sure about that. MLB doesn't really need the "clevelandguardians.com" domain -- all the team sites are hosted as subdomains of mlb.com. How many people were typing out "clevelandindians.com" to get there? Probably very few -- I imagine the vast majority of traffic is from links and search results.

FWIW, "guardians.com" is for sale and is not connected to roller derby. rangers.com sold for $375k in 2015

maybe rebrand the roller derby team as something like "Night Guardians"

If they're going up against the Undead, Night Stalkers seems the right fit.

all the team sites are hosted as subdomains of mlb.com. How many people were typing out "clevelandindians.com" to get there?

I'd bet a bejillion more than went to mlb.com to find Cleveland tix. Granted, most probably just type "indians tickets" and wait for the search. Still, not surprisingly at all, chicagocubs.com takes you to mlb.com/cubs ... so does cubs.com. As the article you linked notes, it's only the Rays (still taken), Twins (for sale) and Giants (beaten by the NY Giants ... but MLB has the Cardinals).

But of course the case here is not about the domain, it's about the trademark/registration on Cleveland Guardians. Assuming the roller derby did inform the team early on as claimed, the Cleveland American League Base Ball Club cannot claim ignorance here.

"Well, guys, we tried to change the team name, but NOOOO!!!! So, we're going back to Indians! Sorry, gang!"

Sell the domain name for a million or so..

You're off by an order of magnitude at least, my friend.

MLB doesn't really need the "clevelandguardians.com" domain

That's not the issue. The MLB team is basically copying another entity's name, in what is arguably the same field of services: athletic activities or some such. From what I read here, that might be the MLB team's only real defense to a claim for TM infringement: that the services are dissimilar, they are in different channels of trade, fans of the roller derby team are not likely be confused, consumers are sophisticated enuf to know the difference between roller derby and baseball, etc. That would be a difficult argument to make but...

You could go through all sort of surveys and such to prove that. You would hire someone to call up people who say they arent confused about the teams etc. Once upon a time the Grand Ole Opry had cases going on all over the country arguing about whether "opry" had become generic and had all sorts of surveys and such.

But other than that, the roller derby team seems to have them dead to rights. There's no doubt the roller derby team has priority, they've clearly used it first. They've also established continuous use by virtue of their domain name. In the old days, before the internet that could be a touchy issue as you might only be allowed to claim a certain perimeter of X miles around your establishment where you had established: "continuous use".

Courts would then have to carve out some radius where one side had the rights and the other had the rest of the country. The old Snyder's of Hanover vs Snyder's of Berlin seems to come to mind. Not so much nowadays, continuous use seems to be established in the entire country as soon as it hits the internet. The Taylor wine case was another strange one, I dont think I ever really understood what happened there (something about the original family).

Legally, I think the roller derby has about a strong case as one can imagine. Realistically, we've seen the TM office prove that it's not above rolling over for larger entities. It's not FDA level corrupt but its pretty shady. didnt the Redskin case get batted around for years with the TM office refusing to acknowledge the obvious? Case may be more likely brought in federal court in Cleveland I would think. Presumably a more professional set of judges there, but who knows? maybe some of them have season tickets.

I thought the roller derby team didn't trademark their name.

Assuming the roller derby did inform the team early on as claimed, the Cleveland American League Base Ball Club cannot claim ignorance here.

Technically and legally I dont think it matters. By virtue of the domain name, they've established their use all over the country, if not the world. Now if they had a registered TM that would be Constructive Notice that the MLB team (BB) has knowledge of the mark. Gee did the roller club (RC) not file a TM?

But I'm not 100% certain about this hypothetical. Say the RC hadnt sent the BB a letter or a troubadour or a singing telegram announcing their existence, And we further assume the RC did not file a TM (dumb). Could MLB team claim they had no knowledge, so called: "Good faith use" and they've established their own constructive use of the name Guardians for the BB? It would be a longshot even in the old days because of the close physical proximity of these teams, both in Cleveland area I guess. So a court wouldnt be able to carve out some physical radius for the BB.

So not likely but its arguable. Some courts might say that the geography thing isnt controlling rather it comes down to consumer awareness, i.e. would consumers be confused. Yeah, you could probably come up with any sort of legal result you want to in that case. See below for an interesting discussion of this sort of thing, starting at p. 331 but p 334+ seems to zero in on the issue:

https://scholarship.kentlaw.iit.edu/cgi/viewcontent.cgi?article=1234&context=ckjip

I thought the roller derby team didn't trademark their name.

That seems to be true, but it doesnt mean they lose. For one thing, they've filed something with the state of Ohio which might be pretty relevant to putting others on notice. TM cases can be filed in federal or state court (that's weird huh?) so presumably an Ohio state court would be all over that and put the BB on notice. Would a federal court look at that the same way and say the BB had notice? Im not sure.

But there's other stuff. The RC used it on the internet. That's constructive use all over. That alone should be enuf to establish priority. I think. In most cases, between parties who are roughly on the same economic playing field, the domain name thing will win. They will file cause of action with some of these Domain Name dispute agencies or whatever they are now (INternic?) and just say hey we bought this domain name first, these guys are using it, so stop them.

But the BB team obviously has millions of dollars so I bet they could f.uck with them a long time on this battlefield.

The RC also sent them a letter. So now the BB is on notice, they have to know about the other name. So the BB says "well we didn't know until now. And we now we printed out all these news releases and we've released them all over to the public. So hey, we've established a constructive use. IN GOOD FAITH."

The RC responds: "First it's not good faith cause you didn't even do a search on the internet for the name. ANd second, you havent even really started to use it, have you? You've told everyone its not official and you wont be the Guardians until 2022. So no constructive use and no good faith use."

I think the RC has far stronger claim, you would really have to do some mental gymnastics to let the BB team win this.

When the Dallas Mavericks were founded, they appropriated the mascot of The University of Texas at Arlington a mere 20 miles away. There were some bad feelings between the school and the team, but UTA never took any legal action.

How about the Cleveland Baseball Guardians? Like the New York Football Giants.

I thought the roller derby team didn't trademark their name.

Sigh. Everyone repeat after me: trademark isn't a verb!

trademark isn't a verb!

We're not in a court of law, we don't need to legalese everything.
(Legalese is also not a verb. Look what I just did.)

Wouldn't want to be accused of being argumentative or anything like that but Oxford Languages considers it a verb.

I can’t believe they verbed trademark.

You can verb anything these days.

I can’t believe they verbed trademark.

You can verb anything these days.

The acting of making a verb out of a noun is something I call "verbing"...which is a perfect example of itself, since "verb" is a noun!

I think the RC has far stronger claim, you would really have to do some mental gymnastics to let the BB team win this.

MLB is a multi-billion dollar industry with lawyers by the score; obviously, they can crush the roller derby team into fine powder anytime they want.

The acting of making a verb out of a noun is something I call "verbing"...which is a perfect example of itself, since "verb" is a noun!

Are you really trying to assert something from Calvin and Hobbes as your own idea? That's a new low, even for you.

Irregardless, I could care less.

Jose, you sound disinterested in this topic.

The above begs the question.

Fighting over this would be silly for everyone involved. If the Indians fight over it, they unnecessarily make themselves look like jerks, when they could cheaply and easily buy some good will in town. If the roller derby club fights over it, the baseball team can just say "due to legal issues, we've decided to call ourselves the Spiders after all" and then the roller derbyists get nothing.

Better would be something like, roller derby club gets a payoff that's sizable for a roller derby club but negligible for the baseball club, the members of the roller derby club get season tickets for life, and both sides get to appear on local news talking about how terrific the other side is. Maybe have Jose Ramirez show up to a roller derby match and sign autographs or something.

It's so easy for everybody to win on this, there's no reason to make everybody lose.

It's so easy for everybody to win on this, there's no reason to make everybody lose.

I'd like to introduce you to humans.

I actually once bought a WashingtonRednecks.com name from GoDaddy in the hope of selling it in case the Snyders lost their Redskins trademark, but I was too lazy to follow up on it, and it expired after a couple of years. I don't think such a name would even be allowed at this point, but then neither is WashingtonRedskins.com.

If the roller derby club fights over it, the baseball team can just say "due to legal issues, we've decided to call ourselves the Spiders after all" and then the roller derbyists get nothing.

That would be the optimal solution.

How about the Cleveland Baseball Guardians? Like the New York Football Giants.

I'd be curious about that too. Might actually be a good way to brand it initially anyway, as casual fans nationwide won't instantly recognize "Cleveland Guardians" as a baseball team.

Sigh. Everyone repeat after me: trademark isn't a verb!

You should have Oxford English Dictionaried that before you posted.

trademark, v.
1. transitive. To affix a trademark to (something); to provide with a trademark. Also: to register (a name, symbol, etc.) as a trademark.

They should just copy Washington Football Team.

Cleveland Baseball Team would work just fine... just as long as nobody googles CBT.

Cleveland Baseball Team would work just fine.

I earlier voiced my preference here for going outside the North American sports naming tradition, suggesting things like Forest City Ball Club or Baseball Western Reserve.

It was, to put it mildly, not well received. But I don't care. I'd love to see a team from the Big Four NA sports break from the city/nickname stranglehold on team names.

I'd love to see a team from the Big Four NA sports break from the city/nickname stranglehold on team names.

You don't count the New England Patriots or Golden State Warriors? Or Washington Football Team?

The MLS has done what you're suggesting, but that's mostly to emulate European naming conventions. The WFL had the Hawaiians, which was a pretty groovy name.

I wouldn't count the first 2. Yes, it's a wider region rather than city. But you get the same in college sports, when it is often State/nickname or college name/nickname. It's the same template.

WFT yes, but that was supposed to be a temporary name, and I am pretty sure they are still trying to change it to something else.

You don't count the New England Patriots or Golden State Warriors?

I had mentioned them as the only slight deviations from the norm. Also, the old Orange County nicknames - Los Angeles Angels of Anaheim and Mighty Ducks of Anaheim were names outside the norm, but they're both gone now.

Or Washington Football Team?

If that sticks, I would count that.

On a related note, I do think Daniel Snyder made a good move going with WFT as a placeholder. When they do replace the name, I think it will cause a less negative reaction among the fanbase against the new nickname because it will be replacing Football Team, not Redskins.

Interestingly enough, the Patriots and Warriors both adopted those names in 1971 (and the Pats wanted to be called the Bay State Patriots, but the NFL rejected that). That was apparently the time when SoSH's theories might have come to fruition and teams might have been willing to be more experimental with their names. The Seventies, man.

I kind of feel obligated to chime in here as I'm an actual trademark lawyer...

David isn't just being pedantic here. I mean, of course he's being pedantic, have you met him? But not just pedantic. Using "trademark" as a verb connotes that there is an administrative process by which you can just "claim" a mark. And in many foreign jurisdictions that's essentially correct, but not in the US. Here, trademark rights are based on use of the mark in interstate commerce - you actually have to build your rights by exposing your mark to consumers and building recognition. A federal trademark registration is an acknowledgement of, not a grant of, rights (although it does carry important benefits such as a presumption that you have valid nationwide rights in the mark). Yes, you can apply to register a mark based on a bona fide intent to use it if you haven't started yet, but you can't get a registration until you actually begin use and file a specimen with the USPTO.

So, saying "the Guardians roller derby team didn't trademarked their name" is incorrect. They have (belatedly) ​applied to register their name as a trademark, based on the rights they allegedly have built by operating under the mark for several years.

Some thoughts on the case itself...

Because the RD team is asserting an unregistered mark, they do not have the presumption of nationwide rights as above. They will therefore have to prove the strength of their rights in the mark. From what I've seen (basically just looking at their website), they appear to be a pretty small-time operation that is probably closer to the rec-league softball end of the spectrum than the organized pro sports end. They may have established some recognition among consumers in the Cleveland area, but it may well be limited. They would almost certainly not be able to establish any rights outside of Cleveland, although that's neither here nor there as a concurrent use situation (where the baseball team could use the mark outside of the Cleveland area but the RD team has priority in Cleveland) would obviously be of no use to the baseball team.

The RD team has all the earmarks of a party that is scrambling to try to shore up rights that they were never concerned with but now want to try to enforce, which is never a good position to be in in the trademark world. They filed an application with the USPTO on July 27, four days after the BB team. Interestingly, the application covers only four categories of goods (bumper stickers, coozies, clothing/footwear, pins/patches) and not something like "entertainment services in the nature of roller derby matches." Also, if you look at their website, they made a post announcing that they are "recruiting for the 2022 season" on July 24. They posted again on Aug. 3 announcing that merch is available - consisting of a single t-shirt.

These were their first posts since March 2018 (a team photo and 2018 schedule). This raises the possibility that they may have abandoned the mark, for which the standard is cessation of use without intent to resume. Although maintaining the website may speak to an intent to resume, it would not by itself suffice to maintain trademark rights - you have to actually be providing the goods and/or services for which you're claiming rights. If you don't use the mark in commerce for a three-year period, there is a rebuttable presumption that the mark is abandoned. If you do the math above, I wouldn't be surprised if this period had some influence on the timing of the name change announcement.

The RD team may be implicitly conceding that it abandoned the mark in connection with entertainment services by not having any meets since 2018 (although they would have a good argument that nonuse at least during the pandemic was excusable), but trying to rely on purported rights in connection with various types of merch. To do so, it would have to establish ongoing merch sales beyond a "token" level.

If the RD team is able to establish that it has rights that have not been abandoned, it then must establish that the relevant consumers are likely to be confused by the BB team's use of the mark. This is the factor analysis that Sunday Silence discusses above. Obviously it is quite fact-intense, but there are several factors at issue here: First, the strength of the mark being asserted. Even if the RD team can establish rights, the scope of such rights is likely to be quite limited unless it can establish that it has significant recognition among consumers in Cleveland, which seems rather unlikely, at least based on what we see on their website. The fact that the marks are exactly the same definitely weighs significantly in favor of the RD team, as does the similarity of the relevant goods - at least for merch, which is another reason why they are focusing on that rather than the entertainment services aspect of it - baseball being distinguishable from roller derby. As Sunday Silence notes, the factor analysis also includes the channels of trade, the sophistication of the relevant consumers, and others including the intent of the alleged infringer in adopting the mark.

The issue of notice discussed above is actually a relatively minor one. Whether the alleged infringer was aware of the asserted mark is relevant in assessing the intent factor, and increases the odds of a finding of willful infringement, which can increase damages. But proving that the alleged infringer was on notice is nowhere near enough by itself - courts usually treat the other factors as being significantly more important. Trademark law in the US is consumer-focused rather than party-focused, because the broadest goal (in theory) is to protect the consumer's ability to buy what they think they're buying. So if the court finds that consumers are not likely to be confused in the end, the issue of notice is only tangential.

To tie all of this together, I think the RD team's case has significant potential weaknesses, and they could be a party who, unexpectedly finding itself in a position of having some leverage, is seeking a windfall settlement. Or, of course, the BB team could still be offering a ridiculously stingy payment and the RB team just wants something reasonable. But the BB team is not in nearly as weak a position as suggested above.

It will settle, of course - it just looks like there will need to be a round or two of chest-beating to bring the parties' numbers closer together.

I do think Daniel Snyder made a good move

I don't think I've ever read that before!

I don't think I've ever read that before!

I don't think it's been written.

35 - Thanks for that, it's very interesting.

Some thoughts on the case itself...

Thanks for sharing! That was good analysis.

Yeah, that's really good stuff, ElRoy. It makes me wonder if the baseball team was aware of the roller derby team but chose not to reach out to them or make them aware of the impending name change. The baseball franchise might have feared that the roller derby team would resume team activities, start selling merch, etc., in hopes of strengthening their eventual trademark claim.

as long as the 2022 MLB opening day game on ESPN is Guardians-Angels and Curtis Sliwa throws out the first pitch, I'll be fine with the new nickname.

#35's last sentence is the most important - yes, they'll settle. It's in both sides' interest rather than pay lawyers to fight forever. All the claims brought to the fight are just trying to gain leverage for the settlement. And of course the baseball team has a perfectly good BATNA of just picking a different name instead.

It makes me wonder if the baseball team was aware of the roller derby team but chose not to reach out to them or make them aware of the impending name change. The baseball franchise might have feared that the roller derby team would resume team activities, start selling merch, etc., in hopes of strengthening their eventual trademark claim.

Oh, I guarantee you that the BB team was aware from day 1 of their new name search. They have top-notch IP counsel (Cowan Liebowitz & Latman in NYC, according to USPTO records), and there's absolutely no way they would not have done a robust trademark search on any name they were considering. Under these circumstances, it would basically be malpractice not to.

The complaint states that the BB team did contact the RD team in June and said they were considering the Guardians name among others, and inquired about buying the rights. The RD team thought the offer was too low, though. I think that was the best way to play it - obviously it's better to try to negotiate with the RD team in the posture that you may end up choosing a different name than after you've already announced that you're going with Guardians.

As you say, after being made aware of the BB team's interest, the RD team could have done (and apparently did) two things to try to bolster its claim: 1) resuming/increasing use of the mark, and 2) applying to register the mark.

For the first, I'm sure the BB team had done their diligence and were aware of the possible abandonment. There is case law to the effect that once a mark has been abandoned, resuming use doesn't cure the abandonment. So if they were going to eventually be able to show facts to win on abandonment, at least in theory, they already had it won at that point. (Now of course the analysis gets a lot murkier in practice because "intent not to resume use" is necessary, and that's often difficult to show where there's no press release saying "We're rebranding!" or something - and resumption of use could be interpreted as evidence of intent to resume.)

The BB team (well advised by counsel, no doubt) also covered its bases (see what I did there?) if the RD team filed a trademark application. As it happened, the RD team waited until a few days after the official announcement to file, whereas the BB team had filed in the US on the same day as the announcement. So the BB team's US application has priority. However, even if the RD team had filed in June right after the BB team contacted them, it was still too late - the BB team had already filed in April in Mauritius so as not to draw attention as a US filing would have. By virtue of Mauritius being a signatory to an international treaty, the BB team had a six-month window to file in other member countries (including the US) claiming priority back to the April filing date of the Mauritius application. So even if the RD team would have filed in June, the BB team would (and has) filed based on its Mauritius priority to leapfrog the RB team. Seems kind of unfair, I know, but that's international trademark law, and the BB team's lawyers were well aware.

So, given that they were (mostly) covered against the downside risk of approaching the RD team, it was the right move to see if they would sell for an acceptable number. Obviously they didn't, so the BB team went ahead with the announcement, which theoretically increased the RD team's leverage somewhat - but that leverage was only real to the extent that it was backed with a willingness to go to court, so here we are. And as Karl notes, just because they announced it doesn't mean they can't change direction.

Either way, the RD team stands to sell some merch it wouldn't otherwise have sold.

It's interesting that in the complaint, they don't even allege that any spectators come to see the RD meets, although a 2015 post from their website refers to "Doors at 5:00" and "Come out and cheer your Guardians." That public recognition would be the first thing they would allege if they had any basis for it.

They play(ed) at the C.E. Orr Ice Arena, which doesn't list them among the teams it hosts: Lake Erie Panthers Hockey Club, Euclid Senior Hockey, Jacks Hockey, and Euclid Blade & Edge. It's a high-school size hockey rink - from looking at Google images, it seems like it could accommodate a "crowd" of maybe several dozen?

I don't think the team has much of an argument that its mark is known much outside of the participants and their families. This appears to just be a rec-level club.

The complaint is here if anyone wants to read it in full. Paragraphs 23-25, which speak to what the RD's principal did after the then-Indians got in touch, certainly read like someone who talked to a lawyer and realized he could try to get a windfall from deep pockets.

A lot of media coverage refers to the principal as the "owner" of the RD team - I think it's much more likely that he's just the guy who started the club and the team captain or whatever. His name matches this guy, who is a medical support assistant at the Veterans' Healthcare Administration in Akron.

I can get behind the Mauritius Guardians of Cleveland

According to Military Wiki,

Mauritius does not have a standing army. All military, police, and security functions are carried out by 10,000 active-duty personnel under the command of the Commissioner of Police. The 8,000-member National Police Force is responsible for domestic law enforcement. The 1,500-member Special Mobile Force (SMF) and the 500-member National Coast Guard are the only two paramilitary units in Mauritius. Both units are composed of police officers on lengthy rotations to those services.

So I'm not sure how well equipped they would be to guard Cleveland on top of their regular duties.

You should have Oxford English Dictionaried that before you posted.

trademark, v.
1. transitive. To affix a trademark to (something); to provide with a trademark. Also: to register (a name, symbol, etc.) as a trademark.

No; the problem is that in a legal context (and what are trademarks in a non-legal context, other than when used as a metaphor, such as saying "Jose Bautista's trademarked bat flip") all of those are wrong, and do not match the usage in #8, above. A trademark is a mark that has been used to indicate the origin of a good or service (nitpickers who want to talk about service marks, the line forms to the right). Neither affixing a trademark to something or registering a mark as a trademark is what makes it a trademark. McCoy's post #8 assumes that the roller derby team needed to do something to turn their name into a mark, but that's just not how it works. Their name inherently is a mark.


Unrelatedly, the people above who say, "Well, the Indians should've googled it and found the website" — if they had, they'd have concluded, as I did when this first came up lo those many months ago — that the mark had been abandoned. The minimalist site hadn't been updated in years, and there was no evidence the team was still in operation.

No; the problem is that in a legal context (and what are trademarks in a non-legal context, other than when used as a metaphor, such as saying "Jose Bautista's trademarked bat flip") all of those are wrong, and do not match the usage in #8, above. A trademark is a mark that has been used to indicate the origin of a good or service (nitpickers who want to talk about service marks, the line forms to the right). Neither affixing a trademark to something or registering a mark as a trademark is what makes it a trademark. McCoy's post #8 assumes that the roller derby team needed to do something to turn their name into a mark, but that's just not how it works. Their name inherently is a mark.

Dude. I got you covered.

Neither affixing a trademark to something or registering a mark as a trademark is what makes it a trademark.

This is all well and good, but to be a pedant's pedant, it's also true that this has nothing to do with the noun/verb distinction mentioned in #13.

Dude. I got you covered.

Yes, I saw that after the fact, and I also saw that you had made my second point above about abandonment. However, they had not actually abandoned their "use"¹ of the mark; instead, they had really just abandoned their website. They were still sporadically active on Facebook after 2018.

​
¹Such as it was. As your analysis mentions, it was pretty minimal. While they had put their name on a few pieces of swag, it's not clear to me that they actually sold any merchandise.

This is all well and good, but to be a pedant's pedant, it's also true that this has nothing to do with the noun/verb distinction mentioned in #13.

But it does. What McCoy wrote was that he "thought the RD team didn't trademark the name." You could interpret that as him saying — as most people would, with that phrasing — that he "thought the RD team didn't register the trademark," but even if that had been a correct assumption, it's not the same thing as saying that the RD team didn't own the trademark.

This raises the possibility that they may have abandoned the mark, for which the standard is cessation of use without intent to resume.

Can you name a single case where a company was found to have abandoned their mark? Aside from situations where a company explicitly says it is abandoning a mark.

This is almost impossible to prove in court, no?

,,,but trying to rely on purported rights in connection with various types of merch. To do so, it would have to establish ongoing merch sales beyond a "token" level.

OK so the RD team isn't doing much in the way of business. But how does baseball team have more priority than them? The BB team isnt doing business under the name GUARDIANS either, is it?

WHat were to happen if the RD put together a team over the winter and played a couple games, so that a few people in CLEVELAND now heard of them?

They were still sporadically active on Facebook after 2018.

Yeah, I thought that might be the case - I don't have a Facebook page, so I couldn't login to see whether they had any activity or not.

Can you name a single case where a company was found to have abandoned their mark? Aside from situations where a company explicitly says it is abandoning a mark.

This is almost impossible to prove in court, no?

There are cases where abandonment has been found without explicit acknowledgement. I don't know any off the top of my head, but I'll look it up tomorrow.

But how does baseball team have more priority than them? The BB team isnt doing business under the name GUARDIANS either, is it?

WHat were to happen if the RD put together a team over the winter and played a couple games, so that a few people in CLEVELAND now heard of them?

The BB team has filed an application to register the mark based on intent to use that is prior to the RD team's application. That gives them priority in terms of registration. In terms of use, as I said above, it depends on whether they can establish that the RD team actually abandoned the mark. If yes, then it wouldn't matter if the RD team came back and played a couple of games, because resumption of use doesn't cure abandonment. If no, then the RD team would have continuing prior rights, but limited to the area and extent of their consumer recognition, which appears to be very limited.

Doing some quick googling I see some recent cases have actually found abandonment. This maybe a more recent trend.

Wasnt there a case where the distillery had burned down 20 years prior, they stopped selling the brand, and even so the court still found No Abandonment. Cause they didnt intend to abandon.

Usually what you find in the Handbooks and treatises is that: Because abandonment works as a forfeiture it must be strictly proved. It seems to me from an academic perspective it must be near impossible to prove a negative like that.

I think as long as there's no smoking gun (like someone explicitly saying we aren't doing this anymore) I think the RD club should be ok on this.

Why on earth is the RD club not filing a TM for: "entertainment services in the field of sporting events.." or some such? you seem to touch on this in your comments. Isnt that a mistake?

Q: why doesnt their having a domain name already establish use everywhere?

you're absolutely correct on the Intent to Use application, it gives the BB team constructive use everywhere as of the day of filing. so that much is clear.

A very interesting discussion, thanks!

We had discussed this a little on Discord when the story first broke. I came away thinking "Well, maybe the Indians didn't know how to use Google" but also "Well, looks like that roller-derby team folded in 2018 and probably has no argument now." It appears that's not the case, or at least not that simple.

If anything, my impression is now that the Cleveland Baseball Team just didn't care about the roller Guardians and assumed they could steamroll their complaints away. That's not nice, at the very least.

How about the "Cleveland Guardians Ad Lita"? They could give away a child every Sunday.

I didnt realize the RD had stopped having games or whatever. Abandonment is going to be a hotly contested battleground. 20 years ago I would have told you that would be nearly impossible to prove but I guess recent law is looking a little more critically at the actions of the would-be abandoner.

Also that domain name was registered before BB announced their new name. You cant just pry that away from them there would have to be some sort of agreement to transfer that, that's not just going to pass into the BB teams hands if they have priority on the TM issue.

From what I read here, that might be the MLB team's only real defense to a claim for TM infringement: that the services are dissimilar, they are in different channels of trade, fans of the roller derby team are not likely be confused, consumers are sophisticated enuf to know the difference between roller derby and baseball, etc. That would be a difficult argument to make but...

I'm not a lawyer and perhaps I'm misreading this, but are you saying it would be hard to argue that consumers are sophisticated enough to tell the difference between an MLB team and a small-time, local roller derby team? I'm certainly no great advocate for the wisdom of the American consumer, but this sounds crazy to me. I doubt there's a single potential sports fan in the Cleveland area that doesn't know the difference between a bunch of folks roller skating around an indoor track and a newly-named outdoor baseball team that has a 100 year tradition of playing in front of tens of thousands of fans.

Q: why doesnt their having a domain name already establish use everywhere?

It's black-letter law that use of a mark only in a domain name itself does not constitute use as a trademark, because the domain name (by itself) is not a product or service. Use of a mark on a website (beyond just in the domain name) can of course be trademark use - but the website is just advertising (except in instances of platform-as-a-service, etc.). You have to be actually providing the goods or services you're advertising to build and/or maintain trademark rights, otherwise the website (or any other advertising) is just a facade.

Also that domain name was registered before BB announced their new name. You cant just pry that away from them there would have to be some sort of agreement to transfer that, that's not just going to pass into the BB teams hands if they have priority on the TM issue.

By itself, the registration of the domain name is irrelevant from a trademark standpoint, as discussed above. But I think this is actually an interesting question, and it may depend on how the case is determined. The court can order an infringer to transfer a domain name containing the infringing mark to the other party. However, here the plaintiff has the domain at issue, not the defendant. If the court finds for the BB team based on no likelihood of confusion, you're right, the RD team keeps the domain absent an agreement. But if the BB team wins on abandonment, the judge could find that there is confusion but now the BB team has priority, and thus the RD team should have to transfer the domain.

a 100 year tradition of playing in front of tens of thousands of fans.

Point of order: This "tens of thousands of fans" business did not apply for many of those 100 years.

I'm a homebrewer.
I pretend to be sophisticated.
Having already dealt with Bell's Beer and it's home brew supplies, I was actually confused by Brooklyn Brew Shop, I thought Brew Shop was related to Brooklyn Brewery. It wasn't till Brewery sued did I realize otherwise. Brewery lost this week.

Putting aside the rather farcical sight of a bunch of jabronies on the internet insisting they know better than the OED ... it's a stupid and lame name anyway. They should use the opportunity to reboot to Spiders or something else.

it's a stupid and lame name anyway. They should use the opportunity to reboot to Spiders or something else.

Cuyahogas.

But if the BB team wins on abandonment, the judge could find that there is confusion but now the BB team has priority, and thus the RD team should have to transfer the domain.

I don't believe a judge could do any such thing. As long as the mark was registered in good faith — and it seems indisputable that it was — I don't think either the ACPA or UDRP would permit any such order. A judge could restrict how the RD could use the website, but not order the domain to be transferred.

Yeah, I think you're right about that - the ACPA does have a bad-faith requirement. I stand corrected.

Are you really trying to assert something from Calvin and Hobbes as your own idea?

I'm a huge C&H fan (own all the books) but I don't ever remember seeing "verbing" in one of their strips. (And besides, tough guy, I merely said I call it "verbing", not that I made up the word or the concept. Sheesh.)

That's a new low, even for you.

You're welcome, sweetheart.

Mauritius does not have a standing army.

Whenever I see that phrase, I think of Chico Marx in "Duck Soup"; while talking to Groucho, he insists Fredonia should have a standing army, "because that way, we save money on chairs...!"

I'm a huge C&H fan (own all the books) but I don't ever remember seeing "verbing" in one of their strips. (And besides, tough guy, I merely said I call it "verbing", not that I made up the word or the concept. Sheesh.)

https://muddlesintomaximsdotcom.files.wordpress.com/2016/02/calvin-verbed.jpg

They should use the opportunity to reboot to Spiders or something else.

Spiders isn't happening, they're not going with a name that's known for being the losingest of all time.

I stand corrected.

What the hell kind of argument is that? How can I fight with you now?

Point of order: This "tens of thousands of fans" business did not apply for many of those 100 years.

C'mon now. I bet they drew at least a hundred thousands fans every season.

Oh, you mean per game? Well, on the road.

I don't believe a judge could do any such thing. As long as the mark was registered in good faith — and it seems indisputable that it was — I don't think either the ACPA or UDRP would permit any such order

yeah that's kind of what Im getting at. Even if the RD team loses the TM claim they still seem to have an iron clad grip on that domain name. That has to be worth some money. A lot.

I doubt there's a single potential sports fan in the Cleveland area that doesn't know the difference between a bunch of folks roller skating around an indoor track and a newly-named outdoor baseball team that has a 100 year tradition of playing in front of tens of thousands of fans.

Its kind of a more formal legal requirement that you have to jump through hoops. Oftentimes it comes up with say some sophisticated equipment, like Acme blood testing, and theres another Acme for oxygen testing and the one side says the people who purchase these blood tests are like doctors and researchers and they're really intellectual and they know that the oxygen testing is totally separate entity.

I never had a case like that where that was a big issue. So Im not real familiar with what those cases are like, other than reading about it in a treatise. But you make a good pt. even if you're not an intellectual, you should know the difference between baseball and rollerball. The fact that these are both sports teams is what makes the case really interesting, these are both in the same field, sports entertainment. Is that close enuf to make a case for infringement?

Use of a mark on a website (beyond just in the domain name) can of course be trademark use - but the website is just advertising (except in instances of platform-as-a-service, etc.)

well wait a second to establish use in commerce of a product, you have to make a few bona fide sales. BUt in the case of services, isnt advertising enough to establish use in commerce? I havent practiced this law in years, but I think so.

So say they have a website currently and they're promoting a team. isnt that enough to establish use in commerce?

Also another pt is the three year thing for abandonment. Did they maybe play a game in late 2018 so its not quite been three years? or maybe they still had a practice or something in late 2018? Do we know more facts about that?

BUt in the case of services, isnt advertising enough to establish use in commerce?

The PTO accepts advertising as a specimen of use for services, yes. But to have rights, you have to actually offer the services. If I get a registration for a mark for, I dunno, house cleaning services, and I have a website for several years but never clean a single house, you would win a petition to cancel my registration unless I could point to some very unusual circumstances.

Also another pt is the three year thing for abandonment. Did they maybe play a game in late 2018 so its not quite been three years? or maybe they still had a practice or something in late 2018? Do we know more facts about that?

I don’t know all the facts there, no.

you would win a petition to cancel my registration unless I could point to some very unusual circumstances.

Is it likely that the the last two years qualify as very unusual circumstances? I assume even if 2020 and 2021 do the absence of anything in 2019 is problematic for the roller derby team.

Are the courts likely to consider the amount of money offered by the Indians to the Guardians in their ruling and if so is the revenue to the Indians or the revenue to the Guardians going to be the decisive factor? In other words if the Indians offered the Guardians a million dollars is the court going to rule that that is a de minimis cost for the Indians and rule against them or would they consider it a substantial amount to the Guardians (I’m guessing) and rule in favor if the Indians?

This raises the possibility that they may have abandoned the mark, for which the standard is cessation of use without intent to resume. Although maintaining the website may speak to an intent to resume, it would not by itself suffice to maintain trademark rights - you have to actually be providing the goods and/or services for which you're claiming rights.

you seem to be conflating two issues. WHen abandonment is alleged that must necessarily begin by not providing the services. But you cant say "you have to actually be providing the services" to establish TM rights. That would be a tautology.

By definition, the RD team is alleged (in our hypothetical) to not be providing the service. THe standard is it has to be shown they intended to NOT resume. Its not they have to be actually providing services, because if they were abandonment wouldnt be an issue.

If I get a registration for a mark for, I dunno, house cleaning services, and I have a website for several years but never clean a single house, you would win a petition to cancel my registration unless I could point to some very unusual circumstances.

Im not sure I agree on this particular example. If I have a federal TM and am advertising my service the entire time, then clearly I havent abandoned it. What would be the basis of the petition to cancel?

I guess this is all theoretical, because the RD team doesnt have a TM to cancel in the first place. The issue is their common law rights to the mark. Does abandonment work the same way, when its just the common law rights?

And what does Ohio TM law say about all this? What rights does their filing a service mark in OH confer?

I'm probably wrong about this, but I remember around 15 years ago that both texasrangers.com and minnesotatwins.com were owned by non MLB entities.

84 - you might be right. MLB has been gradually buying the short version domains (i.e. "rangers.com") over the years -- they now have all but 3. Usually for a few hundred grand each, notwithstanding a suspect claim that "rockies.com" sold for $1.2 million. I suspect the longer domains are less valuable.

yes, the Twins website named is/was just owned by a couple of dudes who are twins from yes, Minnesota, and they just kind of want/wanted to keep it for spits and giggles. I don't recall them showing up at the team's HQ with mask, gun, and written demands to get the 'hostage' back or anything.

How about this scenario:

RD team now files TM application claiming date of use: 2018, for "entertainment services namely sports including roller derby.." Something like that.

Their position with respect to abandonment is: NEver intended to abandon. They've been paying the yearly fees for the domain name each year and are still actively recruiting players.

They should entertain the possibility of filing an injunction in OH based on their service mark registration in the state of OH.

I know this isn’t necessarily relevant to the legal case, but in the real world this is a ridiculous suit. The notion that the roller derby team can’t possibly operate and advertise now that the baseball team has the same name is obviously false.

In reality, this has been a publicity bonanza for the roller derby team. The number of people who have heard of them, and know that they are distinct from the baseball club, must have increased 1,000+ times since the Indians announced their name change. I’m sure the roller derby team has sold a lot more merchandise since the name change, to the extent they ever sold any before. Do you think a single person who bought a roller derby team shirt subsequently asked for a refund because they thought they were ordering a baseball jersey?

It would be different if the baseball team were trying to strongarm them into giving up the name. But that doesn’t seem to be happening at all.

Yours is a very good pt THe modern trend in trademark law is to focus on whether consumers will be deceived by a mark. I.e. to make the query into what consumers would think rather than what actions TM owners are taking. Of course confusion in the marketplace is a legal determination based on facts which can be manipulated and/or subjected to ridiculous conclusions.

Part of the problem is that TM law like all common law is based on the past history of cases, which can and often are based on antiquated notions of doing business. Like the idea of "marking" a good, and the idea of making a "use in commerce" might be relevant to an 18th century merchant. But nowadays we have lots of services that use TMs, we have internet means of advertising, we have kiosks and other ways of dispensing goods/services that might be different than a literal "mark" on a good.

So a modern case, like this one, illustrates that sort of dilemma. In the old days they would look at confusion in the market place and they would pay particular attention on what type of goods/services we are dealing with. So a "strong" mark for say potato chips would certainly preclude someone using the same mark for say "tomatoes" cause you know they're both foods. Foods are similar, the mark in issue is "strong" so it precludes the same mark from similar goods.

SO today's case we have a "service" for a sport. How close do the sports have to be? Is it enuf to be a sport for there to be a problem? So there can only be one Guardian for a sport? Reality on the ground, in the market place is that almost no one is going to confuse a roller derby team for a baseball team. Modern mass communication means that everyone knows who the Cleveland baseball team is.

Yeah it seems silly. But that's how a lot of law is. It's based on principles hundreds of years old and you're trying to adjudicate issues in a modern changing world. Like the Theranos case; you're trying to prove fraud an age old crime and here we're dealing with a billion dollar corporation, science no one can understand, 5 months of testimony, jurors playing suduko losing interest etc

So there can only be one Guardian for a sport?

Ffor all of sport, though or did you mean a city. We have precedent with the Giants being in one one city for many years. I wonder how many times in College ball the Wildcats have played the Wildcats or the Tigers the Tigers.

Tigers if I recall is the most common team name in american sports.

But there's issues that come into play. Sometimes a field can be so crowded that no one can claim the right to an exclusive mark. Like say ACME. Im sure there's over 100 ACME marks, maybe 200. So what they say is that they will only carve out a very limited niche for the next ACME TM, like only for dynamite, but someone else has it for ammunition.

So could they say you could have the name TIGERS for LSU but someone else can have TIGERS for the Ole Miss team? Well no. Not exactly....Hmmm

THere's also a distinction between mascots and team names.

There's also an issue whether a name literally on a shirt really functions as a TM. (See SUMO mark, and the various cases on fraternity rings. they wont let them TM fraternity rings.)

But honestly I dont know how the american situation developed with respect to team names. Did it just develop organically that one day we woke up and there's like dozens of College teams with TIGER? Or was there an understanding that these are team names and they really aren't subject to TM protection at all.

Right? You have to understand how that SUMO case went down. They put the name SUMO on tee shirts and tried to claim that was a TM. WOtever court it was said, that's not how a TM functions. It should be like a label inside a shirt to tell you who made this shirt. SUMO isn't being used like that, you're trying to sell that word. On a shirt.

The college ring cases; same idea. They said you're trying to sell PHI BETTA KAPPA rings. You're selling that logo or wotever. That's not how a TM functions, PHI BETA KAPPA isnt a source of goods.

Well OK it's kind of bullshit but here we are that's the law.

So could you apply that same reasoning to NFL or MLB teams and tell them they can't TM them? Well no the NFL would say PACKERS isnt selling the source of shirts. It's SERVICES. RIght? its promoting services.

What is that supposed to mean?

It doesnt mean anything. The real reason is you have to let us have everything we want because otherwise you'd have 50 Billionaires screaming at you. No one wants that kind of trouble.

YOu see how fuc.ked up this whole area is if you start to dig a little deeper into it.

Ffor all of sport, though or did you mean a city.

Honestly your question is really difficult to answer. Presumably if a mark is "strong" its entitled to greater protection than a mark that's "weak."

Usually what that comes down to is they will allow a strong mark a large niche of products services. Like say all paper products. And a weak mark maybe they only allow it for staples but not scissors or something.

But what makes it strong or weak? Well we already mentioned a crowded field. Like there's 100 Tiger names for sports. Yeah that's a real messed up example...

But more often they look at the name itself.

Example: a name made up: KODAK. totally conjured up out of thin air. Just came up randomly in alphabet soup.

Arbitrary name = strong protection.

suggestive name e.g. Hy Grade; Top Shelf; etc. YOu get the idea.

Suggestive name= weak protection.

and there's a continuum running from those two extremes.

But admittedly the issue you raise with Tigers and sports is difficult to answer.

So if they were going to eventually be able to show facts to win on abandonment, at least in theory, they already had it won at that point.

This is a huge assumption. You keep talking about abandonment and not having sold any goods or services. But that's not the issue. Assuming they havent done sold any services (does promoting an event that no one comes too count as doing business?) teh issue is: Did they INTEND to abandon the mark?

As mentioned above, the older cases this was damn near impossible to prove. How do you prove a negative? That's essentially what you're trying to prove that they intended to NOT continue.

The baseball team is also not trying to create any confusion. The team colors, logos, fonts, etc. are all different. It’s not like they’re trying to benefit from confusion with the roller derby team.

Correction in post 92 change the term''suggestive'' to ''descriptive''. a suggestive mark is intermediate between arbitrary and descriptive. The continuum runs: arbitrary-suggestve-descriptive-generic. The latter entitled to no protection

Thinking about it some more I think its truly legal fantasy to even entertain the notion that a team name is some sort of identifier of provider of services. The Mlb provides sport entertainment. The Braves or indians don't provide anything without someone to play against. What if Sumo was to claim their shirts are promotional items for say dancing or running? Do they then win their case?

So could they say you could have the name TIGERS for LSU but someone else can have TIGERS for the Ole Miss team? Well no. Not exactly....Hmmm

There are three Tigers in the SEC (LSU, Auburn and Mizzou).

I’ve been busy all weekend with my in-laws in town…lots to catch up on, I see. Will try to post something tomorrow.

LSU and Missouri seem to get "Tigers" from Civil War units (best not to inquire further about all that), and earlier, Princeton were "Tigers" because of William of Orange, since tigers are orange.

The weird thing is this insistence on the Auburn website about their nickname:

all Auburn athletics teams (men's and women's) are nicknamed the Tigers. The nickname "Tigers" comes from a line in Oliver Goldsmith's poem, "The Deserted Village," published in May 1770, "where crouching tigers await their hapless prey..."

It's something of a WTF connection. The town of Auburn is probably named after the first line of "The Deserted Village": "Sweet Auburn, loveliest village of the plain." But as the title suggests, "Auburn" has gone to hell and is now a wasteland. And in fact, since rural England as a whole has gone to hell and is now a wasteland, everybody who used to live there has had to light out for the colonies, which are terrible places because of tigers and everything. So the tigers aren't in Auburn at all; they're in India. And tigers are very bad.

Of course it is still possible that the school got the nickname from the poem, it just doesn't say very good things for the reading comprehension of the typical Auburn student.

BDC -- without commenting on students, I'd assume that's on the Admin.