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Wednesday, October 27, 2021

Cleveland Guardians roller derby team sues baseball club over name change

The Cleveland Guardians, a co-ed roller derby team, sued the city’s Major League Baseball team Wednesday in a legal fight over its name and trademark.

The roller derby team filed suit in U.S. District Court in Cleveland, seeking to stop the franchise formerly known as the Indians from using the Guardians’ name. The lawsuit said the roller derby team made the baseball club aware of its name early in the process.

The baseball club has been in Cleveland since 1915. It changed its name in July amid longstanding pressure from social justice groups. The change was announced in a video by Cleveland fan Tom Hanks, with music from the Black Keys. What was not disclosed was a long-simmering fight with a team by the same name.

The Guardians’ roller derby team is based in Parma and has competed since 2014. It registered its name with the Ohio Secretary of State in January 2017. Its top foe next season is expected to be the Pittsburgh Undead.

“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,’ ” the lawsuit said.

 

RoyalsRetro (AG#1F) Posted: October 27, 2021 at 12:33 PM | 136 comment(s) Login to Bookmark
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   101. David Nieporent (now, with children) Posted: November 01, 2021 at 05:47 PM (#6050573)
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.
I mean, yes, that's right. Regardless of whether the RD has a valid mark, the goodwill associated with that mark can be measured with an electron microscope. The baseball team wants to use the name because they inexplicably like it, not because they're trying to pass off RD games as coming from them.
   102. What did Billy Ripken have against ElRoy Face? Posted: November 01, 2021 at 06:37 PM (#6050592)
OK, following up on some points raised over the weekend...

From Jose:

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.
Yes, the pandemic would be a great argument for excusable nonuse. The absence of anything in 2019 could still be problematic depending on the overall factual circumstances.

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?
No, that isn't relevant to the factors framing the likelihood of confusion analysis.

From Sunday Silence:

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.
Not sure what you mean here. I don't think I was operating under the assumption that they had ceased to provide services. If that is the assumption, then yes, the focus of course would be on the intent prong.

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?
If you're not actually providing the services, you've ceased use of the mark in commerce, as you are not providing services in the stream of commerce. See Buti v. Perosa S.R.L., 139 F.3d 98 (2d Cir. 1998) (holding that "the mere advertising or promotion of a mark in the United States is insufficient to constitute 'use' of the mark 'in commerce,' within the meaning of the Lanham Act, where that advertising or promotion is unaccompanied by any actual rendering in the United States or in 'commerce which may lawfully be regulated by Congress,' 15 U.S.C. § 1127, of the services 'in connection with which the mark is employed.'").** The cancellation proceeding would then turn on the intent prong. Of course, as I noted on the prior page, continuing advertising could be evidence of intent to resume use.

**Some courts have held that advertising use in preparation for using the mark in commerce can be sufficient in some cases to establish an earlier priority date, but that's not what we have here.

Does abandonment work the same way, when its just the common law rights?
Yes.

And what does Ohio TM law say about all this? What rights does their filing a service mark in OH confer?
In their complaint they alleged that they registered their business name with the Ohio Sec of State, which (as I understand it) is different than an Ohio state trademark registration. Assuming that is true, then the trade name registration is irrelevant.



   103. Jay Seaver Posted: November 01, 2021 at 06:41 PM (#6050593)
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.


Is there an argument that the baseball team is so much larger a business/entity than the roller derby team that the one claiming the trademark would do material harm to the other? Right now, you drop "Cleveland Guardians" in Google and the baseball team is the top result, then there are some stories about the dispute, and then the roller derby team somewhere down toward the bottom, which I'm guessing wasn't the case six months ago. When the baseball team starts using the term in earnest, it could make the roller derby team functionally invisible.

I suppose the argument is that if this was so important, the roller derby team could have registered it, but given the shoestring it likely operates on, the $250+ might have seemed like a luxury. Turns out it wasn't, but I don't know that it's a great precedent that the baseball team can just take the name someone else has been using for a few years just because they're bigger and want it.
   104. What did Billy Ripken have against ElRoy Face? Posted: November 01, 2021 at 06:42 PM (#6050594)
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.
The standard for abandonment is not "intent to abandon," but "intent not to resume use of the mark," which is different. ("Intent to abandon" was the old pre-Lanham Act definition.) A party could not have a bona fide intent to resume using the mark (including actually offering goods or providing services) but still want to maintain rights in the mark. The Lanham Act definition precludes that scenario. Use it or lose it.

That said, the maintenance of the domain name and recruitment of players of course could be evidence of intent to resume use. However, if the recruitment of players only began after the issue came up with the Indians and there was sufficient factual basis to find abandonment before that, it wouldn't remedy the abandonment.

   105. What did Billy Ripken have against ElRoy Face? Posted: November 01, 2021 at 06:46 PM (#6050596)
From Dave:

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.
That's why they're focusing on merch, which they can allege is identical between both teams. If they tried to focus on the entertainment services, one common framework used in assessing whether the parties' services are close enough for confusion to be likely is whether consumers often encounter the services coming from the same provider under in the marketplace. Obviously, you don't find too many entities that offer entertainment in the form of both professional baseball and roller derby.

Plus, there is precedent for different pro sports teams in the same city having the same name. St. Louis Cardinals, for example.
   106. What did Billy Ripken have against ElRoy Face? Posted: November 01, 2021 at 06:47 PM (#6050597)
Back to Sunday Silence:

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.
Yep.
   107. What did Billy Ripken have against ElRoy Face? Posted: November 01, 2021 at 06:55 PM (#6050599)
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.
See above re the proper standard and not having provided services. I do think holding an event open to the public and promoting it would count as commercial activity for the purpose of use of the mark, even if no one attends.

Agreed that intent not to resume use can be quite difficult to prove - that's why the presumption exists after 3 years of nonuse. The burden then shifts to the mark owner to show affirmative evidence of intent to resume use.
   108. What did Billy Ripken have against ElRoy Face? Posted: November 01, 2021 at 07:07 PM (#6050602)
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?
Interesting point about MLB (it's not "the" MLB - you have to save "the" for Ohio State) vs. the individual teams actually providing the entertainment. But each team is using its own marks for their participation in the entertainment, and that's enough to establish trademark rights.

On the last page there was a digression into the difference between ornamental use of a phrase or design on a t-shirt and use as a trademark, as addressed in the SUMO case (which I was not specifically familiar with). The distinction there is whether or not the matter on the front of the t-shirt is actually part of the branding. Obviously in the case of a pro sports team selling t-shirts with their logo on the front, it is. If they were to sell t-shirts with a phrase that bears no obvious relationship to them on the front, like I dunno, "The Will to Win" or something, it wouldn't be considered trademark use unless the team can establish that they've used that slogan enough such that consumers recognize it as being associated primarily with the team. In the SUMO case, the TTAB held that the applicant's evidence was insufficient to establish that. The analysis would have been the same if they had claimed the shirts as promotional items for whatever - do consumers recognize that the mark is associated with that provider, for those goods/services?
   109. What did Billy Ripken have against ElRoy Face? Posted: November 01, 2021 at 07:13 PM (#6050605)
From Jay Seaver above:
Is there an argument that the baseball team is so much larger a business/entity than the roller derby team that the one claiming the trademark would do material harm to the other? Right now, you drop "Cleveland Guardians" in Google and the baseball team is the top result, then there are some stories about the dispute, and then the roller derby team somewhere down toward the bottom, which I'm guessing wasn't the case six months ago. When the baseball team starts using the term in earnest, it could make the roller derby team functionally invisible.
Yes - this is the theory of "reverse confusion," where the junior user of the mark is more popular/visible than the senior user. The same factor test for likelihood of confusion applies, though. If consumers aren't likely to be confused as to the source, it doesn't matter if the coexisting use may hurt the senior user's visibility in the marketplace. This is another manifestation of the consumer focus rather than party focus of US trademark law.
   110. Zach Posted: November 01, 2021 at 07:53 PM (#6050609)
I mean, yes, that's right. Regardless of whether the RD has a valid mark, the goodwill associated with that mark can be measured with an electron microscope.

Yeah, but the spillover from the baseball team onto the value of the roller derby's team is not trivial.

If they sell t-shirts or baseball caps saying "Cleveland Guardians", they'll look like cheap bootlegs to almost every one of their potential customers. If they promote players appearing at a Cleveland Guardians pep rally, they'll have to deal with disappointed baseball fans showing up, etc, etc.

The baseball team is planning to take almost all of the economic value of the name and use it for their own purposes.
   111. sunday silence (again) Posted: November 01, 2021 at 07:54 PM (#6050610)
However, if the recruitment of players only began after the issue came up with the Indians and there was sufficient factual basis to find abandonment before that, it wouldn't remedy the abandonment.


I dont understand what you mean by "remedy" the abandonment.

The standard is "intent not to resume." Presumably as I understand, intent not to resume = abandonment.

I dont understand how you cure or remedy that. Its a status. And I guess it doesnt change.

Correct me if im wrong. If you are recruiting players, then that would be some evidence that they intended to resume. Yes?

If so what difference does it make when they began recruiting? Are you saying they waited too long to recruit?
   112. What did Billy Ripken have against ElRoy Face? Posted: November 01, 2021 at 08:10 PM (#6050613)
The baseball team is planning to take almost all of the economic value of the name and use it for their own purposes.
For the purposes of trademark law, there is no independent "economic value" of a mark. The only value is the consumer recognition and goodwill built through use of the mark by a party.
   113. sunday silence (again) Posted: November 01, 2021 at 08:15 PM (#6050614)

Agreed that intent not to resume use can be quite difficult to prove - that's why the presumption exists after 3 years of nonuse. The burden then shifts to the mark owner to show affirmative evidence of intent to resume use.


As Jay (I think) pointed out, the covid crisis would seem like a very good reason not to play games. Assuming a court agrees, then there's no argument that there's been three years of non use. Well, there is, but its excusable/understandable.

If so then the BB team would now have to prove intent to NOT use. Which is a huge burden.

Agree?
   114. sunday silence (again) Posted: November 01, 2021 at 08:17 PM (#6050615)
For the purposes of trademark law, there is no independent "economic value" of a mark. The only value is the consumer recognition and goodwill built through use of the mark by a party.


I agree but I'm trying to figure out what Zach's argument or point is. At the beginning he says;

... the spillover from the baseball team onto the value of the roller derby's team is not trivial.


OK, and so what? what's the point?
   115. What did Billy Ripken have against ElRoy Face? Posted: November 01, 2021 at 08:17 PM (#6050616)
I dont understand what you mean by "remedy" the abandonment.

The standard is "intent not to resume." Presumably as I understand, intent not to resume = abandonment.
If you've stopped use of the mark, and there is either (a) enough evidence to show that you at some point did not intend to resume use, or (b) you haven't used the mark for 3 years and are not able to offer sufficient affirmative evidence that you did intend to resume use during that whole time, the mark is abandoned and your rights are "cut off."

If, hypothetically, at some point after those conditions have been fulfilled, you learn that a deep-pocketed party is interested in the mark and you start using it again, it does not restore your rights. They've still been cut off.

Correct me if im wrong. If you are recruiting players, then that would be some evidence that they intended to resume. Yes? If so what difference does it make when they began recruiting? Are you saying they waited too long to recruit?
It would be evidence that they intend to resume, as of the point that they began recruiting players again. It wouldn't be retroactive to cover a prior period.

All of this analysis may or may not actually apply to the facts here, of course. I don't know enough about the extent and timing of their actual activities, whether having meets with other teams, recruiting players, posting on Facebook, etc.

   116. What did Billy Ripken have against ElRoy Face? Posted: November 01, 2021 at 08:19 PM (#6050618)
As Jay (I think) pointed out, the covid crisis would seem like a very good reason not to play games. Assuming a court agrees, then there's no argument that there's been three years of non use. Well, there is, but its excusable/understandable.

If so then the BB team would now have to prove intent to NOT use. Which is a huge burden.

Agree?
Sure - I wouldn't necessarily describe it as a "huge burden," which might imply a heightened evidentiary standard, but yeah, it's difficult to prove intent.
   117. David Nieporent (now, with children) Posted: November 01, 2021 at 08:27 PM (#6050619)
Yeah, but the spillover from the baseball team onto the value of the roller derby's team is not trivial.

If they sell t-shirts or baseball caps saying "Cleveland Guardians", they'll look like cheap bootlegs to almost every one of their potential customers. If they promote players appearing at a Cleveland Guardians pep rally, they'll have to deal with disappointed baseball fans showing up, etc, etc.

The baseball team is planning to take almost all of the economic value of the name and use it for their own purposes.
I mean, in a purely formalistic way what you're saying is true. IRL, they don't have players to promote or pep rallies. They're a freaking amateur RD club. And there doesn't seem to be any evidence that they actually sell swag. If they do, to buy it you'd have to either show up to one of their matches or possibly do it off their website, and anybody buying it would know what they were getting and from whom. (Hell, they're probably a lot more likely to sell swag for the kitsch value now.)

But I wasn't implying that the baseball team wasn't trying to take the economic value of the name; I was simply making the point that the Indians weren't trying to benefit from the (zero) value generated by the pre-existing trademark.
   118. sunday silence (again) Posted: November 01, 2021 at 08:30 PM (#6050621)
It would be evidence that they intend to resume, as of the point that they began recruiting players again. It wouldn't be retroactive to cover a prior period.


Why wouldn't it be essentially retroactive? In the sense that it "undoes" the legal effect of the non use.

Lets say they didnt use the mark for 3 years. Didn't have any matches. BB team claims its abandoned. RD team shows they were making recruiting efforts in 2020 (2 years after last match). Court finds that's evidence of intent to resume. BOOM. No abandonment, whatever non use in commerce there was has been ameliorated. It had no effect.

That's going back in time. No?

Or say there was non use for three years. And they started recruiting in 2021. THree years plus one day after the last match. Does that make difference? Are you saying the 3 years is a bright line that precludes any further evidence from being admitted after say July 1, 2021. Court says "we will accept no more evidence on this issue. if its later than such and such date which is 3 years after the last use.

Because some of the stuff you were saying above made it sound like the evidence of intent to resume had to exist before the three years are up. YOu were talking about them scrambling because of the time frame and such.

   119. David Nieporent (now, with children) Posted: November 01, 2021 at 08:31 PM (#6050622)
... the spillover from the baseball team onto the value of the roller derby's team is not trivial.

OK, and so what? what's the point?
He's trying to claim the RD team is going to suffer harm from the Indians' renaming.
   120. Hank Gillette Posted: November 01, 2021 at 08:50 PM (#6050625)
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.

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.
No, they were just trying to ignore them and pretend they didn’t exist. I see this as arrogance on the part of the Cleveland Baseball Team (CBT), thinking that they can just act as though the name was not being used. How long do you think it would be before the CBT tried to force the roller derby team into changing their name?

The issue of a whether the roller derby team has a trademark makes this murky, but companies, even small companies, who have a trademark can take action against another company trying to appropriate the trademarked name.

It’s ridiculous that the CBT did not handle this and get some sort of accommodation before announcing that the team was going to be renamed the “Guardians”.

Just for the record, I dislike roller derby and think “Guardians” is a really stupid name.
   121. What did Billy Ripken have against ElRoy Face? Posted: November 01, 2021 at 08:51 PM (#6050626)
Why wouldn't it be essentially retroactive? In the sense that it "undoes" the legal effect of the non use
Because the case law says so.
   122. What did Billy Ripken have against ElRoy Face? Posted: November 01, 2021 at 08:56 PM (#6050628)
Lets say they didnt use the mark for 3 years. Didn't have any matches. BB team claims its abandoned. RD team shows they were making recruiting efforts in 2020 (2 years after last match). Court finds that's evidence of intent to resume. BOOM. No abandonment, whatever non use in commerce there was has been ameliorated. It had no effect.

That's going back in time. No?
In that case, if the court were to find that evidence of recruitment in 2020 was sufficient to show intent to resume use, there would be no abandonment to be cured in the first place. And that is indeed possible.

But let’s say in this example that there are 2019 emails produced in discovery saying that the RD team is done and will be folding. That could be sufficient evidence to show abandonment such that the 2020 recruitment couldn’t restore rights. If the court found otherwise in those circumstances, that would be a key issue on appeal.
   123. What did Billy Ripken have against ElRoy Face? Posted: November 01, 2021 at 08:58 PM (#6050630)
Or say there was non use for three years. And they started recruiting in 2021. THree years plus one day after the last match. Does that make difference? Are you saying the 3 years is a bright line that precludes any further evidence from being admitted after say July 1, 2021. Court says "we will accept no more evidence on this issue. if its later than such and such date which is 3 years after the last use.
No, not saying that there is a bright line rule. It’s all very fact-specific. But the three years does trigger the presumption, statutorily.

I said they were scrambling - not that it would necessarily do them any good. Sorry if my being unclear about that muddied the discussion.
   124. Mayor Blomberg Posted: November 01, 2021 at 09:59 PM (#6050639)
If they sell t-shirts or baseball caps saying "Cleveland Guardians", they'll look like cheap bootlegs to almost every one of their potential customers. If they promote players appearing at a Cleveland Guardians pep rally, they'll have to deal with disappointed baseball fans showing up, etc, etc.


That's awfully unlikely; I've looked at the RD logo and t-shirt.
   125. Never Give an Inge (Dave) Posted: November 02, 2021 at 02:49 AM (#6050656)

From the Facebook page, it looks like the RD team had events within the past three years.

How long do you think it would be before the CBT tried to force the roller derby team into changing their name?

Probably never. They’d probably just continue to pretend the RD team didn’t exist. How would they strongarm them, in practice, knowing they have no legal basis for doing so?

Yeah, but the spillover from the baseball team onto the value of the roller derby's team is not trivial.


Yes, 99% of the economic value was created by the baseball team, and the RD team is now benefiting from the spillover effect.
   126. Zach Posted: November 02, 2021 at 12:17 PM (#6050706)
... the spillover from the baseball team onto the value of the roller derby's team is not trivial.


OK, and so what? what's the point?


That the baseball team's use of the identical name in the identical market will significantly inhibit the roller derby team's ability to make use of the name. Confusion and dilution is guaranteed for the roller derby team and the customers of the roller derby team. Their ability to market to their own customers is significantly limited by the fact that a much larger organization moved next door and is planning to do business under exactly the same name.

Also, I'm not at all certain that no confusion for baseball customers is possible. Suppose the roller derby team goes to Nike and licenses a line of urban apparel that prominently says "Cleveland Guardians" in multiple color schemes. Infringing or non infringing? Suppose they license an "Official Cleveland Guardians Sports Bar" right across from the stadium? Suppose they take a full page ad in the paper saying "Cleveland Guardians hate Rob Manfred!"

The baseball team needs to buy the roller derby team out.
   127. Mayor Blomberg Posted: November 02, 2021 at 12:26 PM (#6050709)
Suppose the roller derby team goes to Nike and licenses a line of urban apparel

Why would Nike say yes? Does it make that little from MLB?

Do RD teams even make any money? Leagues are all city-based, only a couple have gone as far as a Wikipedia page. Cleveland ain't one of them.

There's apparently a league in Houston, or was, not that I had the slightest idea. (I did know of some local women's leagues from a couple students who skated, but those aren't even shoestring operations,they're barefoot.)
   128. CFBF is Obsessed with Art Deco Posted: November 02, 2021 at 12:42 PM (#6050712)
Just so I'm clear on the stakes here, this case is going to end with a settlement and the baseball team rolling its eyes and writing the roller derby team a check that probably wouldn't even approach the cost of a minimum salary utility infielder, right?
   129. Zach Posted: November 02, 2021 at 12:51 PM (#6050714)
Why would Nike say yes? Does it make that little from MLB?

In other words, there would be quite a lot of confusion, enough for MLB to intervene and prevent Nike from making that deal.

Do RD teams even make any money? Leagues are all city-based, only a couple have gone as far as a Wikipedia page. Cleveland ain't one of them.

And here we come back to the point that we all knew already: the Cleveland Baseball Team does not anticipate that "sharing" the roller derby's trademark will leave any significant space for the roller derby team to operate, except maybe hawking t-shirts inside the auditorium during matches.
   130. What did Billy Ripken have against ElRoy Face? Posted: November 02, 2021 at 12:56 PM (#6050716)
That the baseball team's use of the identical name in the identical market will significantly inhibit the roller derby team's ability to make use of the name. Confusion and dilution is guaranteed for the roller derby team and the customers of the roller derby team.
Again, the effect on the RD team's business is not material unless there is a likelihood of confusion - which is not guaranteed. That's what the factor analysis test is to determine. Dilution applies only if the mark has become famous as associated with the senior user, which is the polar opposite of what we have here.

Suppose the roller derby team goes to Nike and licenses a line of urban apparel that prominently says "Cleveland Guardians" in multiple color schemes. Infringing or non infringing?
That's why they are focusing on merch, yes. That's a much different analysis than baseball vs. roller derby entertainment.

Suppose they license an "Official Cleveland Guardians Sports Bar" right across from the stadium?
Now we're talking about bar/restaurant services, which are not at issue. An infringement suit is based on the existing uses of the mark, not any possible hypothetical future use**. Likewise, a trademark opposition proceeding is based on the goods/services as described in the registration(s) and application(s) at issue.

**There is a "natural zone of expansion" doctrine, but it is limited.

   131. What did Billy Ripken have against ElRoy Face? Posted: November 02, 2021 at 12:56 PM (#6050717)
Just so I'm clear on the stakes here, this case is going to end with a settlement and the baseball team rolling its eyes and writing the roller derby team a check that probably wouldn't even approach the cost of a minimum salary utility infielder, right?
Yes.
   132. What did Billy Ripken have against ElRoy Face? Posted: November 02, 2021 at 01:01 PM (#6050718)
And here we come back to the point that we all knew already: the Cleveland Baseball Team does not anticipate that "sharing" the roller derby's trademark will leave any significant space for the roller derby team to operate, except maybe hawking t-shirts inside the auditorium during matches.
That's not how trademark law works. The roller derby team does not have the inherent right to do anything more than the extent to which it has already established trademark rights (again, with the potential limited exception of the natural zone of expansion). It has built what appear to be minimal, at best, trademark rights that indeed probably don't go much beyond hawking t-shirts inside the high-school rec hockey arena where they have matches.

The baseball team does not have the right to use the mark in any way that is likely to cause consumer confusion. Absent that, it's just competition in the marketplace.
   133. Mayor Blomberg Posted: November 02, 2021 at 01:40 PM (#6050726)
Why would Nike say yes? Does it make that little from MLB?

In other words, there would be quite a lot of confusion, enough for MLB to intervene and prevent Nike from making that deal.


I don't think so at all. What I'd much rather like to see is how many people actually knew this roller derby league exists. Is it more than one team? Does it draw any attendance? I remember exactly nobody on this site reacting to the BB team's name with "OMG, What about the Roller Derby????"

My point is that at this juncture the RD team would be attempting to profit from the publicity the BB team gave it -- they'd never otherwise have gone to Nike -- and at that point Nike would be foolish to be a party. Your argument seems to be that BB is injuring the RD's marketing when in fact it has created opportunities. Is the BB team suing to stop RD tshirt sales?
   134. base ball chick Posted: November 02, 2021 at 03:12 PM (#6050739)
if the RD team does not want to give up the name or sell it for a couple of dollars, they really don't have any legal way of stopping the baseball team from using their name anyhow. Do i understand this law stuff rightly?

i am very glad IANAL because there is a whole lot of stuff that is not, um, straightforward. it has made me realize how much it is necessary to change laws frequently because they way things were when they were written a few hundred years back is not how things are now.

and what is not changed is them with $$$ got more law on their side somehow than them who don't got $$$
   135. What did Billy Ripken have against ElRoy Face? Posted: November 02, 2021 at 03:53 PM (#6050749)
if the RD team does not want to give up the name or sell it for a couple of dollars, they really don't have any legal way of stopping the baseball team from using their name anyhow. Do i understand this law stuff rightly?
I would say they do not have a good chance of stopping the baseball team from using the name just for playing baseball games. But of course the baseball team doesn't want the name if that's all it can do with it - they want to sell merchandise, etc. as well. And the roller derby team has at least a fighting chance of getting a court order saying the baseball team can't sell merch, which gives the RD team some degree of leverage to get paid.

i am very glad IANAL
You have way too much common sense to be a lawyer ;).

it is necessary to change laws frequently because they way things were when they were written a few hundred years back is not how things are now.
True. Although laws tend to be written broadly with the specifics filled in over time by court decisions, even that has been painfully slow to adapt to changes in technology, etc. The principles of trademark law have actually been pretty durable, relatively speaking - copyright law is a total mess in a lot of areas right now.

what is not changed is them with $$$ got more law on their side somehow than them who don't got $$$
Even more true.





   136. Greg Pope Posted: November 02, 2021 at 04:19 PM (#6050757)
The standard for abandonment is not "intent to abandon," but "intent not to resume use of the mark," which is different. ("Intent to abandon" was the old pre-Lanham Act definition.) A party could not have a bona fide intent to resume using the mark (including actually offering goods or providing services) but still want to maintain rights in the mark. The Lanham Act definition precludes that scenario. Use it or lose it.

If I read this right, and if I remember an earlier discussion correctly (neither are a given), this means that the Guardians need to sporadically sell some merchandise with the Indians logo on it or else they lose their rights to it. And if that happened, then any number of clothing manufacturers could make Cleveland Indian shirts and caps with Chief Wahoo. That seems troublesome. I don't think that the Washington Football Team wants to sell Redskins stuff, but given that they've explicitly abandoned the name and logo, is there any way to make sure nobody else uses it?

How does that apply to old logos? Or anything else that's been updated/refreshed? For example, the NFL Logo has changed over the years. If the NFL doesn't put the 1960 logo on anything, at some point can someone else use it?
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