Can Two Sports Teams In The Same City Have Identical Names?

The baseball team should have known what was to come and decided on an alternative name prior to making a full-fledged rebranding announcement.

Did the Cleveland Indians commit a colossal misstep with rebranding to the Guardians? I posed that question at the beginning of August and concluded that the baseball franchise’s apparent failure to conduct the necessary diligence to determine that a Cleveland-based roller derby team was operating under the same name 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).

Roughly three months later, that roller derby team has initiated a lawsuit in the U.S. District Court for the Northern District of Ohio against the baseball franchise to prohibit the Indians from rebranding to the Guardians. The complaint, based on the roller derby team’s claim to common law trademark rights, states that the baseball team had actual knowledge of the roller derby team’s existence and went out of its way to file trademark applications in the small island nation of Mauritius to hide from the public its intent to rebrand to Guardians, which was already in use with a sports team in Cleveland.

The complaint begins with a premise that two sports teams in the same city cannot have identical names and that Major League Baseball would never permit “Chicago Cubs” lacrosse or “New York Yankees” rugby teams to operate alongside its storied baseball clubs. I have to imagine this is accurate, knowing how vigilant Major League Baseball is with enforcing its intellectual property rights.

“The same laws that protect baseball team owners’ trademark rights, though, also work in reverse,” states the complaint. “A Major League club cannot simply take a smaller team’s name and use it for itself. Confusion would still arise. Yet that is precisely what Defendant, Cleveland Guardians Baseball Company, LLC (f/k/a Cleveland Indians Baseball Company), seeks to do.”

The roller derby team owned the ClevelandGuardians.com domain name as well as social media accounts for Cleveland Guardians prior to the baseball team’s decision to rebrand and, according to the complaint, the baseball team offered only a nominal amount of money (“likely no more than fifteen minutes of annual team revenue,” which is probably around $10,000) to acquire those assets. Lawyers for the roller derby team also say that merchandise suppliers have refused to work with the roller derby team, believing that it is the roller derby team that is violating the Indians’ intellectual property rights.

“As a nonprofit organization that loves sports and the city of Cleveland, we are saddened that the Indians have forced us into having to protect the name we have used here for years,” said Gary Sweatt, the owner of Guardians Roller Derby. “We know we are in the right, however, and just like our athletes do on the track, we will put everything into this effort at the courthouse.”

The complaint indicates that the Cleveland Guardians roller derby team has used its name since 2013 and that the team formally registered its name with the Ohio Secretary of State. It addresses an anticipated defense that the roller derby team has recently ceased use and therefore has abandoned its rights to the Guardians name by seeking to excuse any nonuse based on the COVID-19 pandemic causing the cancellation of many events.

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This matter likely could have been and certainly should have been resolved with the Cleveland baseball team purchasing the intellectual property rights from the roller derby team if the baseball club was so determined to rebrand to the Guardians name. Even better, the baseball team should have known what was to come and decided on an alternative name prior to making a full-fledged rebranding announcement that featured narration from actor Tom Hanks.


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.

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