Last week, the Cleveland Indians baseball team finally changed their name. Problem is, that name has been used for almost a decade by a roller derby team and they even own the domain clevelandguardians.com. Oops. From Yahoo! Sports:
U.S. trademark law generally awards trademarks based on "first-to-use," rather than "first-to-file." Proof of use ordinarily involves evidence that the mark has been used for business purposes, as opposed to being inactive and squatted on. From that lens, the roller derby team has the decisive advantage. Yet the Indians filing first does supply a tactical advantage: The application will be reviewed first by USPTO trademark examiners, who could then publish it for opposition.
Are the Guardians and would-be Guardians headed to court? [Trademark law expert and Athlete Trademarks author Alexandra] Roberts is skeptical this dispute will play out that way. She noted the roller derby team is unlikely to have the financial resources to see a federal lawsuit all the way through, though a dispute before the Trademark Trial and Appeal Board—"a logical next step given the pending applications"—is faster and less expensive. Roberts suspects the two teams could reach a consent agreement as a form of compromise. The agreement would detail how each could use the mark to avoid confusion.
Yet Roberts said the Indians have placed themselves in a difficult spot where they likely can't walk away from the Guardians. The roller derby team is poised to be the financial beneficiary of the Indians' entrenched position.
"After the baseball team's triumphant announcement, narrated by none other than Tom Hanks, I doubt it would risk losing its new name and going back to the drawing board yet again," Roberts said. "The trademark—and probably also the domain name—are worth too much to the baseball team at this point not to simply pay for them, whatever the price."
(Thanks, Rick Pescovitz!)