by Intellectual Property Attorney Bill Honaker, the IP Guy
Don’t make the same mistake when choosing your trademark
The Cleveland Indians whiffed big time when they decided to change their name to the Guardians. There was already a Cleveland Guardians team. The Cleveland Guardians roller derby team filed a lawsuit claiming trademark infringement. C’mon man!
If the roller derby team did use Cleveland Guardians as they claim, they can stop the baseball team. The roller derby team claims they have used the name since 2013. They didn’t register the trademark with the USPTO, but in the US, you don’t have to register to have rights. Using a trademark gives you common law rights. Federal registration is not required, but it’s advisable to get important additional rights.
What went wrong?
The Cleveland Indians should have done a clearance investigation. When picking a trademark, it’s important to do a search to avoid getting sued. In my opinion, this should always be done for important trademarks. When naming a billion-dollar baseball team, it’s imperative.
Trademark infringement occurs when you use a mark that is confusingly similar to another’s trademark, so the clearance investigation looks for trademarks that might be, in the eyes of consumers, confusingly similar. A two-part test is applied: 1) how similar are the trademarks, and 2) how close are the goods and services on which the trademark is used. If the trademarks are the same, then the goods and services don’t have to be as close to find infringement.
In this situation, a simple search would have raised red flags. The trademarks are the same, they’re both sports teams, and they’re in the same city.
This case will likely settle, but I suspect the value of the roller derby’s trademark has increased dramatically. The baseball team made its announcement and will now find it difficult to pick a new name. They even had Tom Hanks make the announcement, Tom can’t be wrong, C’mon Man!
These simple steps will avoid this problem.
Check to see if the domain name is available.
The URL, “ClevelandGuardians.com” is not owned by the baseball team. It’s owned by the roller derby team. When picking a trademark if the domain name is important to your marketing efforts, that’s the first place to start. Checking the domain name would have been the first red flag.
Check the USPTO Website.
Log into the USPTO Website and check TESS, the Trademark Electronic Search Service. I have a how-to video on how to do a search. You’re looking for marks similar to yours and that have similar goods and services. The roller derby mark wouldn’t have turned up on TESS because they never registered it. This is one of the reasons to register your trademark, so it will appear in a search. It’s a self-policing benefit.
Check the Internet.
Again, you are looking for marks like yours and that have similar goods and services. The roller derby team has a website and social media presence. It’s highly likely it would have appeared in a basic search.
If it looks clear from the above, then have a full trademark search conducted by a trademark attorney to be sure you are okay. The roller derby’s mark would have shown up here.
The roller derby team would have been found in time for the baseball team to reach an agreement, or choose something different. Negotiating will be much harder now, since the roller derby team knows the baseball team has committed. You never want to be, and frankly there is no reason to be, in this situation.
If you are picking a trademark, give me a call and we can talk. The last thing you want is to launch your new trademark and then get sued. Ask the Cleveland Guardians, which one, well either one . . . but it’s confusing.
About the Author:
Bill Honaker, “The IP Guy” is a former USPTO Examiner, a partner with Dickinson-Wright, and author of the forthcoming book, Invisible Assets – How to Maximize the Hidden Value in Your Business. To download a sample chapter, click here.