Upon hearing the formal announcement that the Cleveland Indians were changing their name to the Cleveland Guardians, a shift which is set to debut in 2022, fans may have been surprised to find that there was already a ClevelandGuardians.com established and set up. The catch? It was not a website for the soon-to-be baseball team, but instead was a site devoted to the Cleveland flat track roller derby team of the same name.
Now, that team is suing the MLB franchise on the grounds that "two sports teams in the same city cannot have identical names," according to a line in the intro of a lawsuit regarding the name change (h/t Talia Naquin of Fox 8 Cleveland).
"Major League Baseball would never permit 'Chicago Cubs' lacrosse or 'New York Yankees' rugby teams to operate alongside its storied baseball clubs and rightly so," the claim argues at its beginning. "Confusion would otherwise result."
The lawsuit goes on to state that "a Major League club cannot simply take a smaller team's name and use it for itself" and that "there cannot be two 'Cleveland Guardians' teams in Cleveland, and, to be blunt, Plaintiff was here first." The suit also claims that the roller derby team had been using the name for seven years and registered the name with the State of Ohio in 2017.
Michael McCann of Sportico foresaw this potential roadblock back in early August, acknowledging that trademark law "generally awards trademarks based on 'first-to-use,' rather than 'first-to-file,'" and the roller derby team has used said trademark for business purposes. They have merchandise available, they have a social media page with a decently large following and they partake in tournaments with other organizations.
"It is inconceivable that an organization worth more than $1B and estimated to have annual revenues of $290M+ would not at least have performed a Google search for 'Cleveland Guardians' before settling on the name, and even a cursory search would have returned Plaintiff’s website (www.clevelandguardians.com) as the first 'hit,'" says the lawsuit, which further alleges that the MLB franchise attempted to file the trademark "surreptitiously" in order to avoid drawing attention to the application.
The roller derby's lawsuit does say that the baseball team let them know they were considering using "Guardians" as a name and inquired about the derby's intellectual property. However, when the MLB franchise sent their offer to sell the rights, the roller derby team claims that they felt they were not offered a fair amount and sent back a counteroffer.
No comment has been made thus far by the Cleveland baseball team.