Cleveland’s Major League baseball team has been looking for a new name for a while — and on July 23 of this year, the team announced that the Cleveland Indians were no more. They will now be known as the Cleveland Guardians.
But there’s a snag: Cleveland already has a sports team known as “The Guardians.” A male roller derby team has used that name for almost 10 years, and they even own a website and a Facebook page using that name.
Who gets the right to trademark the name?
It’s easy to assume that the bigger (wealthier) organization gets the name — but that’s not how trademarks work.
Both teams have now filed for a trademark — and all the merchandising rights that might bring — and the MLB team did get their application in first by four days. However, trademark law favors the “first-to-use” the name, not the “first-to-file” for a trademark.
The roller derby team has a decisive advantage in that it has been actively using the name for their business purposes — as evidenced by their website and social media pages. That means that there could be a big battle for the title and trademark ahead.
Is a legal battle inevitable over a trademark?
Not necessarily. Neither team is doing a lot of talking in public right now, so you can generally presume that they’re negotiating heavily behind the scenes for an equitable solution. In practical terms, that may mean the MLB team gets the name after paying the roller derby team for the privilege.
Intellectual property rights are a very big part of business in the modern world, where a name can — and often does — mean everything to a brand. When you’re faced with an IP battle, don’t overlook any potential solution.