The Cleveland Guardians are already in a legal battle

I’ve written at length before about the real, tangible harm caused by the appropriation of Native or Indigenous imagery and culture for use as sports team names and mascots. Last month, in a long-overdue move, Cleveland’s baseball team finally dumped its outdated racist moniker in favor of a new one, the “Guardians.”

As Sports Illustrated reported, the new name will take effect in 2022.

Cleveland announced Friday it will change its team name to the Guardians beginning in 2022.

The franchise’s name change comes after months of deliberation regarding a potential new nickname. Cleveland’s baseball team has used the moniker “Indians” since 1915, though it did discontinue the use of the Chief Wahoo logo in 2019.

“We are committed to making a positive impact in our community and embrace our responsibility to advocate social justice and equality,” Cleveland’s statement read in July. “Our organization fully recognizes our team name is among the most visible ways in which we connect with the community.”

But as much as the team’s decision to change names was long overdue, it was also surprisingly poorly executed. The excellent ESPN journalist Clinton Yates pointed out that Cleveland’s announcement was...lackluster.

Yates and Shakeia Taylor, who made a similar point, are both undeniably correct. The team is changing the name in an implicit acknowledgment of the anti-Indigenous racism it causes, and of which it is symptomatic. And yet the organization could not be bothered to even acknowledge that fact, let alone apologize for the harm caused by the name. Frighteningly, some correctly pointed out that this lack of remorse could be because of the new iconography’s uncomfortable resemblance to the team’s past racist mascot.

You might think that’s a coincidence, except that the team continues to protect and enforce its copyright as to “Chief Wahoo.”

Others pointed out the history of “guardians” as a connection to law enforcement. Although the name is ostensibly tied to the statutes known as the Guardians of Transportation in Cleveland, some questioned whether the name was appropriate in light of the commonality of takes like this last year.

But that wasn’t all. The team adopted a name, “Cleveland Guardians,” that was already being used.

It seems that for years, “Cleveland Guardians” was the city’s roller derby team, and the name was already registered by the derby team as an Ohio state trademark. The Cleveland baseball team filed for federal trademark protection for “Cleveland Guardians” on July 23, 2021, and the derby team filed for federal trademark protection on July 27, four days later.

Trademarks are governed by a federal law called the Lanham Act. But there are also state law trademarks, which generally are for our purposes the same as federal trademarks but only within the boundaries of the state in which the mark is registered. So that means that within the State of Ohio, the roller derby team has a superior right to the use of the name “Cleveland Guardians.”

The baseball team is arguing that they registered the federal trademark first, and federal law preempts state law. To explain what we mean, we have to dive into trademark law a bit. There are two kinds of trademarks that concern us here: registered and unregistered. Registered trademarks are the ones in a big book the federal government keeps called the Principal Register. An unregistered trademark is one that’s not in the Principal Register. If you want to impress your friends, there’s often an easy way to tell the difference. Unregistered trademarks, often called “common-law” trademarks, usually have a “TM” next to them. Registered trademarks — the ones in the Principal Register — usually have an ® next to them. (There are, as always, exceptions.)

Now, under a case called Two Pesos v. Taco Cabana, a party still has limited enforcement power with an unregistered trademark (i.e., you can still sue to stop another person from using it). However, possession of an unregistered trademark doesn’t allow a party either to (a) block importation of infringing goods or (b) make the relevant mark “incontestable.” And that’s actually a big deal, because if an entity can’t stop other people from using a name or logo, then those other people can make their own jerseys and merchandise and profit off of said name or logo. So without full registered trademark protection, it’s possible to lose a lot of money, creating a considerable incentive to avoid names or logos which can’t be registered.

Now, the Guardians roller derby team is saying that they had an unregistered federal trademark as to the “Cleveland Guardians” name - and they’re probably right. The result, however, could be that neither party gets the registered trademark, and if that’s the result then neither party has an incontestable mark. For a Major League Baseball team, that would obviously be suboptimal, as “official” merchandise would not be the only stuff can that bear the “Cleveland Guardians” name and logo.

Given all of this, it beggars belief that the Cleveland baseball team didn’t know they were trying to take over a name and trade dress another entity was using, particularly given the roller derby team had a registered Ohio state trademark. It seems they did actually know and attempted a rather questionable method of getting around that:

However, according to trademark attorney Josh Gerben, the Cleveland Indians first submitted a trademark filing on April 8 in the Republic of Mauritius, a small island nation near Africa.

That means the Indians can claim April 8 as their “priority” filing date in the United States, according to a tweet posted by Gerben.

The dispute will probably end up with a monetary settlement of some kind. Still, the fact remains that the Cleveland baseball team is attempting to replace a racist name with one that is already being used by somebody else. Moreover, using a small African nation to do so when your old name is being jettisoned for overt racism is probably not a great look. We should remember that when we discuss the Guardians in 2022.

Sheryl Ring is a consumer rights and civil rights attorney practicing in the Chicago, Illinois area. You can reach her on Twitter @Ring_Sheryl. This post is for informational purposes only and is not legal advice, and does not create any attorney-client relationship.