Intellectual Property, Sports

Did The Cleveland Indians Commit A Colossal Misstep With Rebranding To The Guardians?

As of today, a Cleveland-based roller derby league owns ClevelandGuardians.com,

By  
on

At 9:35 a.m. on July 23, 2021, the Cleveland Indians’ Twitter account published a video featuring Tom Hanks where he announced that the Major League Baseball (MLB) team is rebranding to the Guardians. It concluded a period of a little more than half a year of the team conducting diligence after determining that the 2021 MLB season would be the last for the team to participate as the Indians. While it was initially reported that a change of name was imminent, it was generally understood that the organization wanted to take its time to clear intellectual property rights surrounding any substitute.

Thus, it is so bewildering that, on July 23, the franchise publicly announced its decision to modify its branding to the Guardians, seemingly without going through the necessary steps to ensure that all rights surrounding the mark were cleared.

As of today, the MLB franchise does not own ClevelandGuardians.com. In fact, it is owned and operated by a Cleveland-based roller derby league, which registered the domain name on June 25, 2014. While the website was largely dormant since March 31, 2018, it was updated on July 24, 2021 to indicate that the league is recruiting players for the 2022 season. That was one day after the baseball team decided to push out its announcement to rebrand to the identical word mark used by the roller derby league for many years.

The baseball franchise also does not own the Instagram or Facebook accounts for @ClevelandGuardians, which are also controlled by the roller derby league. The one social media account that the baseball team seemingly was able to lock up was @ClevelandGuardians on TikTok, which features the aforementioned video featuring Hanks’ voice.

Perhaps the strategy was for the baseball team to go ahead with purchasing Guardians.com, but even that domain has yet to be locked up by the organization. As of this article’s publication, the domain is listed on a marketplace that allows third parties to bid on its purchase.

What exactly happened here and who is to blame? It is not at all clear at this point, with neither the baseball franchise nor the roller derby team willing to speak publicly. That is probably because the parties are represented by legal counsel who are now trying to resolve what could be a major trademark battle peacefully and behind closed doors. That said, this all could have and should have been prevented by proactive measures taken prior to the baseball team making any public announcement, including Hanks’ popular voice or not.

To make matters even more interesting, on July 27, the roller derby league filed a trademark application with the U.S. Patent and Trademark Office to register the Cleveland Guardians word mark in connection with bumper stickers, coozies, apparel, and ornamental novelty pins, claiming a first use date of as early as April 2014 with regard to the sale of commercialization of jerseys. That obviously predates the baseball team’s use of any such mark in commerce and could cause quite the controversy unless the parties are able to come to a quick solution.

Sponsored

Ultimately, this could turn out to be a very expensive lesson in understanding the importance of clearing all intellectual property rights before publicly announcing a branding decision for a team worth $1.16 billion (according to Forbes).

Darren Heitner is the founder of Heitner Legal. He is the author of How to Play the Game: What Every Sports Attorney Needs to Know, published by the American Bar Association, and is an adjunct professor at the University of Florida Levin College of Law. You can reach him by email at heitner@gmail.com and follow him on Twitter at @DarrenHeitner.

Sponsored

Topics

, , , ,