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.

One thought on “How NOT To Pick a New Trademark

  1. Pingback: How NOT to Pick a New Trademark Part 2 | Bee Blog

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