The Washington Football Team is getting a lesson on what ‘not to do’ when it finally settles on a team nickname. For instance, make sure no one else is using it.
Cleveland’s baseball team is learning that the hard way. It appears their new nickname, the Guardians, is already being used by a local team — and of all things it’s a roller derby team.
Cleveland announced that it would call itself the Cleveland Guardians after the end of the 2021 season. It’s the end of a long process for the franchise to shed its ‘Indians’ nickname and its former mascot, Chief Wahoo, as the Native American community protested the name for years. Washington is, of course, used to those sorts of protests, thanks to its former team nickname.
The Guardians was supposed to be a fresh start for Cleveland. But, as it turns out, a local roller derby team has been using the name for a decade. Heck, it even owns a web site domain name — clevelandguardians.com.
Sportico.com noted that a flat-track roller derby team has used the name for nearly a decade. It’s an amateur team, but it’s competed both inside and outside the state of Ohio and has even competed in Canada. Cleveland filed a trademark application for the name on July 23, the same day the franchise announced the name change. Sportico noted that the roller derby team hadn’t filed a trademark application. That should be the end of it, right?
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Not necessarily. As Sportico explains:
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.
One last thing. Alexandra Roberts, a trademark law expert at UNH Franklin Pierce School of Law, spoke to Sportico for the story and said that the roller derby team had ‘superior rights.’ But, it’s not clear if there’s a trademark conflict because a determination would have to be made related to whether the marks would cause ‘consumer confusion.’
None of this impacts Washington, of course. At least not yet. Washington doesn’t intend to announce a new team nickname until 2022, though the team’s current color scheme isn’t going anywhere. Plus, Philip Martin McCaulay, a 61-year-old Virginian, owns the trademarks to 44 potential team nicknames Washington might find useful.
Perhaps for all of those reasons, Washington is right to have taken its time to choose a future nickname, even though it retired the former nickname in 2020.
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