How NOT To Pick a New Trademark

When Cleveland’s baseball team decided to change its name from an offensive term for Native Americans to GUARDIANS, it should have used this process:

  • Step 1: Quietly check availability
  • Step 2: File applications to register the new name
  • Step 3: Make a public announcement.
Specimen from trademark filing by roller derby team in Cleveland.

If it had taken Step 1, it would have discovered that the CLEVELAND GUARDIANSSM roller derby team has been around since 2013. If it had followed Step 2, it would have beaten the roller derby’s application to register CLEVELAND GUARDIANS for various swag.[1]

It may not be trademark infringement for two teams, playing different sports, to use the same team name, even if they’re in the same city. Unless, of course one of the names is considered “famous.” No one’s going to get away with calling their volleyball team the Lakers® anytime soon.[2]

But, now that the roller derby team is probably going to get a registration for CLEVELAND GUARDIANS for swag, the baseball team has no ideal solutions. It could:

  • Buy out the roller derby team’s rights in the trademark;
  • Come up with yet another name; or
  • Just not sell bumper stickers, clothing, hats, ornamental pins, or patches that are imprinted with the word GUARDIANS.

All of those options involve lost money and at least one is embarrassing. All the cost and embarrassment could have been avoided by taking the right steps in the right order.

Thanks to Irv L. for the heads up on this snafu.


[1] AP reported on the plan to change the baseball team’s name to the Guardians on July 23. The roller derby team filed its application to register CLEVELAND GUARDIANS on July 27.

[2] This isn’t the first time a roller derby team has had another local team adopt the same team name. Angel FC, the women’s soccer team in Los Angeles, used the name ANGEL even though that name was already being used by the local women’s roller derby team. Same story with Gotham FC and the New York City women’s roller derby team.

Merely Ornamental

You sell CONTRAST brand T-shirts. The shirts are in bright colors with contrasting overstitching: Orange shirts with blue overstitching; red shirts with green stitching; purple shirts with yellow thread. Can you get a trademark registration to protect that feature?

Probably not, at least not right away, because it’s “merely . . . an ornamental or decorative feature on the goods.” When people see your T-shirts, they might think, “Oh that looks nice,” but they don’t think “Oh, that’s a CONTRAST brand shirt.”

If your T-shirts catch on, there might come a day when people see the T-shirts with colorful stitching and think of your company. At that point, the stitching becomes a trademark.

Levi Strauss® has a registered trademark for a “double arcuate[i] designs of orange color displayed on the hip pockets . . ..” That stitching was once “merely ornamental” but now it functions as a trademark.

Non-ornamental
Ornamental

A refusal for “merely ornamental” happens a lot when people try to register an image or words on a shirt. The Trademark Office is more likely to accept an application for a trademark on a shirt when it’s a “small, neat, and discrete wording/design located on the pocket or breast portion of a garment” rather than when it’s emblazoned across the front of a shirt.

There’s no bright line between being “merely ornamental” and “creating a commercial impression” but it means the difference between being a trademark and not being a trademark.


[i] I used this example only so I could use the word “arcuate” which is a really wondrous word that means “shaped like a bow.”