Speaker 1: This is Bloomberg Law with June Brusso from Bloomberg Radio.
Speaker 1: We are loyal and proud and Brazilient. We protect what
Speaker 1: we've earned and always defended. Together, we stand with all
Speaker 1: who understand what it means to be born and built
Speaker 1: from the land. Because this is a city we loved
Speaker 1: and the game we believe it, and together we are
Speaker 1: all Cleveland Guardians. The reassuring voice of Tom Hanks announced
Speaker 1: that the Cleveland Indians would be changing their name after
Speaker 1: more than a hundred years. Their new name, the Cleveland Guardians,
Speaker 1: was inspired by the Art Deco stone sculptures referred to
Speaker 1: as traffic Guardians that flank both ends of the Hope
Speaker 1: Memorial Bridge. Trouble is, there's already a Cleveland team named
Speaker 1: the Guardians, the Cleveland Guardians roller derby team, and it's
Speaker 1: been around for about a day. Kaide joining me as
Speaker 1: trademark attorney Marsha Gantner of Daikea mc gossip. So, Marcia,
Speaker 1: the team spent a year whittling down a list of
Speaker 1: twelve hundred potential names, and they came up with the
Speaker 1: name another team has already So did they not do
Speaker 1: their homework on this name? Oh? I'm confident they did
Speaker 1: their homework. I read a few posts thing, Oh they
Speaker 1: blew it. How could they not look for the domain name?
Speaker 1: I guarantee you the very first thing they did was
Speaker 1: pop up all the various permutations of the domain names.
Speaker 1: So I'm very, very confident they knew the Cleveland Guardians
Speaker 1: dot com website and knew the Cleveland Guardians roller derby
Speaker 1: team when they made the determination to move forward with
Speaker 1: that new name. So why choose a name that's going
Speaker 1: to cause you any kind of legal problems? In this
Speaker 1: day and age, it is extremely difficult to choose a
Speaker 1: new mark that doesn't have any problems, that doesn't have
Speaker 1: any potential conflicts unless you make up a name. You know,
Speaker 1: like Xerox is a made up name, Kodak with a
Speaker 1: made up name, unless you make up a name out
Speaker 1: of whole cloth, you're going to find potential issues. With
Speaker 1: the Internet, with social media, it just doesn't happen anymore
Speaker 1: that you pick a new mark and you do a
Speaker 1: search and it comes out perfectly clean. I mean, part
Speaker 1: of the issue is from a marketing perspective, you want
Speaker 1: to pick a mark that's going to have cachet, that's
Speaker 1: going to have some meaning and significance to your purchasing public.
Speaker 1: And in this instance, it's gonna look good on a
Speaker 1: T shirt, it's gonna fit with your story. And so
Speaker 1: that even though I understand that they had some twelve options,
Speaker 1: those aren't realistic options or aren't to really serve their purpose.
Speaker 1: So it happens that way. Gosh, I haven't had a
Speaker 1: situation with a client in years where I did a
Speaker 1: search and it came up absolutely where I could write
Speaker 1: an opinion that said I didn't find anything. So now,
Speaker 1: the Cleveland Indians filed their trademark application for the name
Speaker 1: Cleveland Guardians to cover merchandise and baseball entertainment services. And
Speaker 1: then four days later, the Cleveland Guardians roller derby team
Speaker 1: files a trademark application to register it for close novelty pins,
Speaker 1: bumper stickers, and can cozies. Does it matter who filed first? Absolutely,
Speaker 1: In the US sent and Trademark Office, when new file
Speaker 1: an application, it gets examined by an examiner at the office,
Speaker 1: and the examiner can reject the application initially based on
Speaker 1: substantive grounds or procedural grounds, you know, the way you've
Speaker 1: identified the goods of how these drawing is depicted things
Speaker 1: like that those procedural objections are relatively easily cured. Is
Speaker 1: so a substance of ground would be that the main
Speaker 1: one is that there is a prior registration or a
Speaker 1: prior files application that conflicts with the mark and the
Speaker 1: goods and services that you've identified in your application. The
Speaker 1: examiner has no authority or capability to decide a priority battle.
Speaker 1: So even if in this instance, for instance, the Rolla
Speaker 1: Derby team has in their application claimed data first use
Speaker 1: that predates the baseball team's applications the filing date, but
Speaker 1: the examiner can't look at that information and say, oh,
Speaker 1: in this application filed on day two, they say they've
Speaker 1: been using it since two thousand and fifteen, but in
Speaker 1: this application filed on day one, they haven't even commenced
Speaker 1: use of it yet. So obviously they two people have priorities.
Speaker 1: So I'm going to reject application one and let application
Speaker 1: to go forward. No, they can't do that. They can't
Speaker 1: do that. They have to look just at the filing date.
Speaker 1: And so the Roller Derby team will get a rejection
Speaker 1: based on the prior pending applications of the baseball team.
Speaker 1: And then what happens is the roller derby team's application
Speaker 1: actually gets suspended pending action on the baseball teams application.
Speaker 1: That's a month long process. And assuming the baseball team's
Speaker 1: application gets published for opposition, then the roller derby team
Speaker 1: can oppose it before the Trademark Trial and Appeal Board.
Speaker 1: What kind of power does that board have? The Trademark
Speaker 1: Trial and Appeal Board can only determine the issue of registration.
Speaker 1: They can't issue an injunction. They can't order damage is
Speaker 1: being paid, they can't even assess the attorney's fees. And
Speaker 1: an opposition for sitting before the Trademark treal and Killboard
Speaker 1: is years. Their initial scheduling order comes out to be
Speaker 1: almost two years, and that's provided nobody gets an extension,
Speaker 1: which extensions are always happened in trademark trial and field
Speaker 1: boats proceeding. So the long and short of it is,
Speaker 1: if the roller derby team wants to do something about it,
Speaker 1: they have to go into court and to the baseball team.
Speaker 1: The roller derby team has been using the Guardians name
Speaker 1: for nearly a decade. It owns the website Cleveland Guardians
Speaker 1: dot com, so it owns the domain. It has the
Speaker 1: Facebook shortcut U R l so it can keep using
Speaker 1: those until and if they decide to go to trial.
Speaker 1: So this is sort of presented in the context of
Speaker 1: what can the roller derby team do to stop the
Speaker 1: baseball team. The baseball team is going to be hard
Speaker 1: pressed to stop the roller derby team. So there are
Speaker 1: domain name dispute proceedings that you can do their online,
Speaker 1: and they're fairly expedited. It's like an online arbitration over
Speaker 1: the domain name. But the baseball team would not succeed
Speaker 1: because of the timeline when the roller derby team registered
Speaker 1: Cleveland Guardians dot com. So unless the baseball team resolves
Speaker 1: that with the roller derby team reaches some resolutions, the
Speaker 1: rollery team is free to continue using that domain Facebook page.
Speaker 1: All of that. You can file trademark complaints with Facebook.
Speaker 1: But but again, in this circumstance, Facebook would not side
Speaker 1: with the baseball team. You know, there's a legitimate question
Speaker 1: about whether or not the roller derby team abandoned the
Speaker 1: bark within the legal standard of the Land of Federal
Speaker 1: Land of Trademark Act, And if there were to be
Speaker 1: a finding of abandonment, then it would be possible for
Speaker 1: the baseball team to assert rights against the roller derby team,
Speaker 1: but I think the domain name is is a real,
Speaker 1: real hard one. Let's say the baseball team or the
Speaker 1: roller derby team decide to take this this to trial.
Speaker 1: What's the issue at trial? In the United States, the
Speaker 1: party that makes the first trademark use sponified trademark use
Speaker 1: is entitled to exclusive right in connection with any good, services,
Speaker 1: or business that would cause a likelihood of confusion. So
Speaker 1: the issue in infringement is likelihood of confusion? Is the
Speaker 1: use for a roller derby team and however they use it,
Speaker 1: and the use of the mark by the baseball team
Speaker 1: if those two parties use that market at the same time,
Speaker 1: is the public likely to be confused when they see
Speaker 1: Cleveland guardians as to the source or origins or association
Speaker 1: of those products, goods, or services. And likelihood of confusion
Speaker 1: varies by what court, what part of the United States
Speaker 1: you're in, but it's always an amalgamum of a number
Speaker 1: of factors. It's a fairly complex factual and legal issue.
Speaker 1: Were it to go to court, litigation would take years.
Speaker 1: So could they settle? Could they make a coexistence agreement?
Speaker 1: For example? Yes? So a coexistence agreement is when the
Speaker 1: parties get to other and they say, with respect to
Speaker 1: mark that seem to conflict, they say, this is gonna
Speaker 1: be your lane, and this is gonna be my lane.
Speaker 1: And we think that if we take these separate lanes
Speaker 1: that there won't be any public confusion. Let if we
Speaker 1: find as time goes along, if there is some confusion,
Speaker 1: will come back and we'll work through it. We'll work
Speaker 1: together to avoid confusion. Coexistance agreements are very, very common
Speaker 1: in trademark disputes because trademark damages are not easy to get.
Speaker 1: I mean, if it's the situation where it's not a counterfeitter,
Speaker 1: there's not a bad guy involved. The smart business decision,
Speaker 1: if you can get it, is to reach some sort
Speaker 1: of agreement. And here is one of those situations where
Speaker 1: there's not a bad guy. Here. You have, at least
Speaker 1: on the face of it, two sort of innocent parties
Speaker 1: who have found themselves in a trademark dispute. And when
Speaker 1: that happens, really the best thing for parties to do
Speaker 1: is to try and reach some sort of resolution. Thanks Marsha.
Speaker 1: That's Marcia Gantner of Daikama Gossip, and that's it for
Speaker 1: the edition of the Bloomberg Lawn Show. Remember you can
Speaker 1: always get the latest legal news honor Bloomberg Lawn podcasts.
Speaker 1: You can find them on Apple Podcasts, Spotify, and at
Speaker 1: Bloomberg dot com, slash podcast slash Law. I'm June Grosso
Speaker 1: and you're listening to Bloomberg