This is Bloomberg Law with June Brusso from Bloomberg Radio. We are loyal and proud and Brazilient. We protect what we've earned and always defended. Together, we stand with all who understand what it means to be born and built from the land. Because this is a city we loved and the game we believe it, and together we are all Cleveland Guardians. The reassuring voice of Tom Hanks announced that the Cleveland Indians would be changing their name after
more than a hundred years. Their new name, the Cleveland Guardians, was inspired by the Art Deco stone sculptures referred to as traffic Guardians that flank both ends of the Hope Memorial Bridge. Trouble is, there's already a Cleveland team named the Guardians, the Cleveland Guardians roller derby team, and it's been around for about a day. Kaide joining me as
trademark attorney Marsha Gantner of Daikea mc gossip. So, Marcia, the team spent a year whittling down a list of twelve hundred potential names, and they came up with the name another team has already So did they not do their homework on this name? Oh? I'm confident they did their homework. I read a few posts thing, Oh they blew it. How could they not look for the domain name? I guarantee you the very first thing they did was pop up all the various permutations of the domain names.
So I'm very, very confident they knew the Cleveland Guardians dot com website and knew the Cleveland Guardians roller derby team when they made the determination to move forward with that new name. So why choose a name that's going to cause you any kind of legal problems? In this day and age, it is extremely difficult to choose a new mark that doesn't have any problems, that doesn't have
any potential conflicts unless you make up a name. You know, like Xerox is a made up name, Kodak with a made up name, unless you make up a name out of whole cloth, you're going to find potential issues. With the Internet, with social media, it just doesn't happen anymore that you pick a new mark and you do a
search and it comes out perfectly clean. I mean, part of the issue is from a marketing perspective, you want to pick a mark that's going to have cachet, that's going to have some meaning and significance to your purchasing public. And in this instance, it's gonna look good on a T shirt, it's gonna fit with your story. And so that even though I understand that they had some twelve options, those aren't realistic options or aren't to really serve their purpose.
So it happens that way. Gosh, I haven't had a situation with a client in years where I did a search and it came up absolutely where I could write an opinion that said I didn't find anything. So now, the Cleveland Indians filed their trademark application for the name Cleveland Guardians to cover merchandise and baseball entertainment services. And then four days later, the Cleveland Guardians roller derby team files a trademark application to register it for close novelty pins,
bumper stickers, and can cozies. Does it matter who filed first? Absolutely, In the US sent and Trademark Office, when new file an application, it gets examined by an examiner at the office, and the examiner can reject the application initially based on substantive grounds or procedural grounds, you know, the way you've identified the goods of how these drawing is depicted things
like that those procedural objections are relatively easily cured. Is so a substance of ground would be that the main one is that there is a prior registration or a prior files application that conflicts with the mark and the goods and services that you've identified in your application. The examiner has no authority or capability to decide a priority battle.
So even if in this instance, for instance, the Rolla Derby team has in their application claimed data first use that predates the baseball team's applications the filing date, but the examiner can't look at that information and say, oh, in this application filed on day two, they say they've been using it since two thousand and fifteen, but in this application filed on day one, they haven't even commenced use of it yet. So obviously they two people have priorities.
So I'm going to reject application one and let application to go forward. No, they can't do that. They can't do that. They have to look just at the filing date. And so the Roller Derby team will get a rejection based on the prior pending applications of the baseball team. And then what happens is the roller derby team's application actually gets suspended pending action on the baseball teams application.
That's a month long process. And assuming the baseball team's application gets published for opposition, then the roller derby team can oppose it before the Trademark Trial and Appeal Board. What kind of power does that board have? The Trademark Trial and Appeal Board can only determine the issue of registration. They can't issue an injunction. They can't order damage is being paid, they can't even assess the attorney's fees. And an opposition for sitting before the Trademark treal and Killboard
is years. Their initial scheduling order comes out to be almost two years, and that's provided nobody gets an extension, which extensions are always happened in trademark trial and field boats proceeding. So the long and short of it is, if the roller derby team wants to do something about it, they have to go into court and to the baseball team. The roller derby team has been using the Guardians name for nearly a decade. It owns the website Cleveland Guardians
dot com, so it owns the domain. It has the Facebook shortcut U R l so it can keep using those until and if they decide to go to trial. So this is sort of presented in the context of what can the roller derby team do to stop the baseball team. The baseball team is going to be hard pressed to stop the roller derby team. So there are domain name dispute proceedings that you can do their online, and they're fairly expedited. It's like an online arbitration over
the domain name. But the baseball team would not succeed because of the timeline when the roller derby team registered Cleveland Guardians dot com. So unless the baseball team resolves that with the roller derby team reaches some resolutions, the rollery team is free to continue using that domain Facebook page. All of that. You can file trademark complaints with Facebook. But but again, in this circumstance, Facebook would not side
with the baseball team. You know, there's a legitimate question about whether or not the roller derby team abandoned the bark within the legal standard of the Land of Federal Land of Trademark Act, And if there were to be a finding of abandonment, then it would be possible for the baseball team to assert rights against the roller derby team, but I think the domain name is is a real, real hard one. Let's say the baseball team or the roller derby team decide to take this this to trial.
What's the issue at trial? In the United States, the party that makes the first trademark use sponified trademark use is entitled to exclusive right in connection with any good, services, or business that would cause a likelihood of confusion. So
the issue in infringement is likelihood of confusion? Is the use for a roller derby team and however they use it, and the use of the mark by the baseball team if those two parties use that market at the same time, is the public likely to be confused when they see Cleveland guardians as to the source or origins or association of those products, goods, or services. And likelihood of confusion varies by what court, what part of the United States you're in, but it's always an amalgamum of a number
of factors. It's a fairly complex factual and legal issue. Were it to go to court, litigation would take years. So could they settle? Could they make a coexistence agreement? For example? Yes? So a coexistence agreement is when the parties get to other and they say, with respect to mark that seem to conflict, they say, this is gonna be your lane, and this is gonna be my lane. And we think that if we take these separate lanes
that there won't be any public confusion. Let if we find as time goes along, if there is some confusion, will come back and we'll work through it. We'll work together to avoid confusion. Coexistance agreements are very, very common in trademark disputes because trademark damages are not easy to get. I mean, if it's the situation where it's not a counterfeitter, there's not a bad guy involved. The smart business decision, if you can get it, is to reach some sort
of agreement. And here is one of those situations where there's not a bad guy. Here. You have, at least on the face of it, two sort of innocent parties who have found themselves in a trademark dispute. And when that happens, really the best thing for parties to do is to try and reach some sort of resolution. Thanks Marsha. That's Marcia Gantner of Daikama Gossip, and that's it for
the edition of the Bloomberg Lawn Show. Remember you can always get the latest legal news honor Bloomberg Lawn podcasts. You can find them on Apple Podcasts, Spotify, and at Bloomberg dot com, slash podcast slash Law. I'm June Grosso and you're listening to Bloomberg