Have you heard? The Cleveland Indians, a MLB team, are planning to rename themselves to the “Cleveland Guardians.” One little problem: that name’s already taken. There’s a roller derby league in Cleveland that’s already got that name and the web domain www.clevelandguardians.com.
There are three different kinds of trademarks: common law, state, and federal. A common law mark protects you in the area where you’re using the mark, whereas state and federal marks protect you in that state and in the United States, respectively. Federal marks also tend to trump the other two marks if you have one.
Now, I did a trademark search – the derby league doesn’t have a federal trademark or a state mark. That means they have the most basic mark, a common law mark. You can bet the baseball team is going to be applying for a federal trademark, because they have the money to pay for great lawyers. So, what happens if there’s a conflict between a common law trademark and a federal trademark?
A situation like this has happened in the past. In 1968, the Burger King chain most people are familiar with came in conflict with another Burger King, a much smaller family-owned restaurant in Mattoon, Illinois, that had an earlier state trademark on the name. The court found that, since the family restaurant had been first, but really had only used the name in Mattoon, it could keep using the name, but only in the Mattoon market – in other words, within a 20-mile radius of town. To this day, the Burger King chain cannot use its name in that radius.
So, if there’s a conflict between the names, the derby team will probably have priority – but only in Cleveland. But, how much sense does it make to have a team name of the “Cleveland Guardians,” if you can only use it outside Cleveland? How much sense does it make to spend $100,000 or more on a lawsuit to get that kind of outcome?
Now, one isn’t likely to confuse a derby team for a MLB team, and the derby team is probably happy to sell the web domain to the MLB team for less than it would cost the lawyers to fight it out, so why is there a problem here? Merchandising. Both teams probably sell shirts, caps, and other paraphernalia with the phrase “Cleveland Guardians” on it, and if there’s another set of Guardians in town, that means price competition. Neither of them wants that.
This is likely to cause the MLB team (and their lawyers) some headaches over the next couple months, and they have lots of money to throw at the problem! Just imagine you own a small business and you discover someone else has trademarked your name already – now what?
Well, that’s something we can help with, but it’s a problem we prefer to help you avoid altogether. Have a logo, tagline, catchphrase, sound, tune, color, or animation you always use with your product or service? Contact us today, and we can help you look into a nice, shiny, new federal trademark of your own!