WEBVTT - Are There Too Many Cleveland Guardians Teams?

0:00:03.160 --> 0:00:07.960
<v Speaker 1>This is Bloomberg Law with June Brusso from Bloomberg Radio.

0:00:09.280 --> 0:00:13.320
<v Speaker 1>We are loyal and proud and Brazilient. We protect what

0:00:13.400 --> 0:00:18.000
<v Speaker 1>we've earned and always defended. Together, we stand with all

0:00:18.079 --> 0:00:21.040
<v Speaker 1>who understand what it means to be born and built

0:00:21.079 --> 0:00:24.200
<v Speaker 1>from the land. Because this is a city we loved

0:00:25.040 --> 0:00:28.600
<v Speaker 1>and the game we believe it, and together we are

0:00:28.640 --> 0:00:35.000
<v Speaker 1>all Cleveland Guardians. The reassuring voice of Tom Hanks announced

0:00:35.040 --> 0:00:38.120
<v Speaker 1>that the Cleveland Indians would be changing their name after

0:00:38.200 --> 0:00:41.960
<v Speaker 1>more than a hundred years. Their new name, the Cleveland Guardians,

0:00:42.400 --> 0:00:46.400
<v Speaker 1>was inspired by the Art Deco stone sculptures referred to

0:00:46.440 --> 0:00:49.720
<v Speaker 1>as traffic Guardians that flank both ends of the Hope

0:00:49.760 --> 0:00:54.480
<v Speaker 1>Memorial Bridge. Trouble is, there's already a Cleveland team named

0:00:54.480 --> 0:00:58.800
<v Speaker 1>the Guardians, the Cleveland Guardians roller derby team, and it's

0:00:58.800 --> 0:01:01.279
<v Speaker 1>been around for about a day. Kaide joining me as

0:01:01.320 --> 0:01:05.480
<v Speaker 1>trademark attorney Marsha Gantner of Daikea mc gossip. So, Marcia,

0:01:05.680 --> 0:01:09.280
<v Speaker 1>the team spent a year whittling down a list of

0:01:09.360 --> 0:01:12.720
<v Speaker 1>twelve hundred potential names, and they came up with the

0:01:12.800 --> 0:01:16.959
<v Speaker 1>name another team has already So did they not do

0:01:17.120 --> 0:01:21.760
<v Speaker 1>their homework on this name? Oh? I'm confident they did

0:01:21.800 --> 0:01:25.720
<v Speaker 1>their homework. I read a few posts thing, Oh they

0:01:25.760 --> 0:01:29.080
<v Speaker 1>blew it. How could they not look for the domain name?

0:01:29.440 --> 0:01:33.000
<v Speaker 1>I guarantee you the very first thing they did was

0:01:33.200 --> 0:01:36.920
<v Speaker 1>pop up all the various permutations of the domain names.

0:01:37.040 --> 0:01:42.320
<v Speaker 1>So I'm very, very confident they knew the Cleveland Guardians

0:01:42.360 --> 0:01:46.640
<v Speaker 1>dot com website and knew the Cleveland Guardians roller derby

0:01:46.680 --> 0:01:50.600
<v Speaker 1>team when they made the determination to move forward with

0:01:50.680 --> 0:01:54.320
<v Speaker 1>that new name. So why choose a name that's going

0:01:54.400 --> 0:01:58.920
<v Speaker 1>to cause you any kind of legal problems? In this

0:01:59.080 --> 0:02:04.480
<v Speaker 1>day and age, it is extremely difficult to choose a

0:02:04.680 --> 0:02:09.000
<v Speaker 1>new mark that doesn't have any problems, that doesn't have

0:02:09.120 --> 0:02:13.200
<v Speaker 1>any potential conflicts unless you make up a name. You know,

0:02:13.320 --> 0:02:16.560
<v Speaker 1>like Xerox is a made up name, Kodak with a

0:02:16.600 --> 0:02:19.799
<v Speaker 1>made up name, unless you make up a name out

0:02:19.800 --> 0:02:24.600
<v Speaker 1>of whole cloth, you're going to find potential issues. With

0:02:24.680 --> 0:02:29.080
<v Speaker 1>the Internet, with social media, it just doesn't happen anymore

0:02:29.240 --> 0:02:31.919
<v Speaker 1>that you pick a new mark and you do a

0:02:32.040 --> 0:02:35.960
<v Speaker 1>search and it comes out perfectly clean. I mean, part

0:02:35.960 --> 0:02:39.440
<v Speaker 1>of the issue is from a marketing perspective, you want

0:02:39.480 --> 0:02:42.239
<v Speaker 1>to pick a mark that's going to have cachet, that's

0:02:42.240 --> 0:02:46.160
<v Speaker 1>going to have some meaning and significance to your purchasing public.

0:02:46.720 --> 0:02:48.800
<v Speaker 1>And in this instance, it's gonna look good on a

0:02:48.840 --> 0:02:51.959
<v Speaker 1>T shirt, it's gonna fit with your story. And so

0:02:52.120 --> 0:02:56.600
<v Speaker 1>that even though I understand that they had some twelve options,

0:02:56.919 --> 0:03:01.640
<v Speaker 1>those aren't realistic options or aren't to really serve their purpose.

0:03:01.800 --> 0:03:05.680
<v Speaker 1>So it happens that way. Gosh, I haven't had a

0:03:05.800 --> 0:03:10.519
<v Speaker 1>situation with a client in years where I did a

0:03:10.600 --> 0:03:13.840
<v Speaker 1>search and it came up absolutely where I could write

0:03:13.840 --> 0:03:17.000
<v Speaker 1>an opinion that said I didn't find anything. So now,

0:03:17.280 --> 0:03:22.280
<v Speaker 1>the Cleveland Indians filed their trademark application for the name

0:03:22.360 --> 0:03:27.680
<v Speaker 1>Cleveland Guardians to cover merchandise and baseball entertainment services. And

0:03:27.720 --> 0:03:31.919
<v Speaker 1>then four days later, the Cleveland Guardians roller derby team

0:03:32.040 --> 0:03:37.120
<v Speaker 1>files a trademark application to register it for close novelty pins,

0:03:37.200 --> 0:03:43.520
<v Speaker 1>bumper stickers, and can cozies. Does it matter who filed first? Absolutely,

0:03:43.920 --> 0:03:47.000
<v Speaker 1>In the US sent and Trademark Office, when new file

0:03:47.080 --> 0:03:51.720
<v Speaker 1>an application, it gets examined by an examiner at the office,

0:03:52.080 --> 0:03:56.800
<v Speaker 1>and the examiner can reject the application initially based on

0:03:57.000 --> 0:04:00.840
<v Speaker 1>substantive grounds or procedural grounds, you know, the way you've

0:04:00.880 --> 0:04:04.320
<v Speaker 1>identified the goods of how these drawing is depicted things

0:04:04.400 --> 0:04:09.080
<v Speaker 1>like that those procedural objections are relatively easily cured. Is

0:04:09.120 --> 0:04:12.280
<v Speaker 1>so a substance of ground would be that the main

0:04:12.360 --> 0:04:15.320
<v Speaker 1>one is that there is a prior registration or a

0:04:15.440 --> 0:04:20.440
<v Speaker 1>prior files application that conflicts with the mark and the

0:04:20.560 --> 0:04:24.120
<v Speaker 1>goods and services that you've identified in your application. The

0:04:24.200 --> 0:04:30.600
<v Speaker 1>examiner has no authority or capability to decide a priority battle.

0:04:30.800 --> 0:04:34.360
<v Speaker 1>So even if in this instance, for instance, the Rolla

0:04:34.400 --> 0:04:38.640
<v Speaker 1>Derby team has in their application claimed data first use

0:04:38.760 --> 0:04:43.400
<v Speaker 1>that predates the baseball team's applications the filing date, but

0:04:44.080 --> 0:04:48.160
<v Speaker 1>the examiner can't look at that information and say, oh,

0:04:48.320 --> 0:04:52.960
<v Speaker 1>in this application filed on day two, they say they've

0:04:52.960 --> 0:04:56.480
<v Speaker 1>been using it since two thousand and fifteen, but in

0:04:56.520 --> 0:05:02.360
<v Speaker 1>this application filed on day one, they haven't even commenced

0:05:02.480 --> 0:05:07.880
<v Speaker 1>use of it yet. So obviously they two people have priorities.

0:05:08.080 --> 0:05:13.279
<v Speaker 1>So I'm going to reject application one and let application

0:05:13.320 --> 0:05:16.160
<v Speaker 1>to go forward. No, they can't do that. They can't

0:05:16.160 --> 0:05:19.680
<v Speaker 1>do that. They have to look just at the filing date.

0:05:20.080 --> 0:05:24.200
<v Speaker 1>And so the Roller Derby team will get a rejection

0:05:24.640 --> 0:05:29.000
<v Speaker 1>based on the prior pending applications of the baseball team.

0:05:29.120 --> 0:05:33.320
<v Speaker 1>And then what happens is the roller derby team's application

0:05:33.520 --> 0:05:39.800
<v Speaker 1>actually gets suspended pending action on the baseball teams application.

0:05:40.279 --> 0:05:45.000
<v Speaker 1>That's a month long process. And assuming the baseball team's

0:05:45.240 --> 0:05:50.680
<v Speaker 1>application gets published for opposition, then the roller derby team

0:05:51.120 --> 0:05:54.560
<v Speaker 1>can oppose it before the Trademark Trial and Appeal Board.

0:05:54.880 --> 0:05:57.880
<v Speaker 1>What kind of power does that board have? The Trademark

0:05:57.920 --> 0:06:03.120
<v Speaker 1>Trial and Appeal Board can only determine the issue of registration.

0:06:03.520 --> 0:06:07.320
<v Speaker 1>They can't issue an injunction. They can't order damage is

0:06:07.480 --> 0:06:11.479
<v Speaker 1>being paid, they can't even assess the attorney's fees. And

0:06:11.560 --> 0:06:14.599
<v Speaker 1>an opposition for sitting before the Trademark treal and Killboard

0:06:15.000 --> 0:06:19.000
<v Speaker 1>is years. Their initial scheduling order comes out to be

0:06:19.080 --> 0:06:23.719
<v Speaker 1>almost two years, and that's provided nobody gets an extension,

0:06:23.839 --> 0:06:27.239
<v Speaker 1>which extensions are always happened in trademark trial and field

0:06:27.240 --> 0:06:30.440
<v Speaker 1>boats proceeding. So the long and short of it is,

0:06:31.000 --> 0:06:34.400
<v Speaker 1>if the roller derby team wants to do something about it,

0:06:34.520 --> 0:06:40.000
<v Speaker 1>they have to go into court and to the baseball team.

0:06:40.120 --> 0:06:44.240
<v Speaker 1>The roller derby team has been using the Guardians name

0:06:44.320 --> 0:06:48.760
<v Speaker 1>for nearly a decade. It owns the website Cleveland Guardians

0:06:48.839 --> 0:06:51.599
<v Speaker 1>dot com, so it owns the domain. It has the

0:06:51.640 --> 0:06:56.360
<v Speaker 1>Facebook shortcut U R l so it can keep using

0:06:56.400 --> 0:06:59.839
<v Speaker 1>those until and if they decide to go to trial.

0:07:00.480 --> 0:07:03.800
<v Speaker 1>So this is sort of presented in the context of

0:07:04.320 --> 0:07:08.880
<v Speaker 1>what can the roller derby team do to stop the

0:07:08.920 --> 0:07:13.720
<v Speaker 1>baseball team. The baseball team is going to be hard

0:07:13.880 --> 0:07:18.800
<v Speaker 1>pressed to stop the roller derby team. So there are

0:07:19.120 --> 0:07:24.240
<v Speaker 1>domain name dispute proceedings that you can do their online,

0:07:24.520 --> 0:07:29.360
<v Speaker 1>and they're fairly expedited. It's like an online arbitration over

0:07:29.400 --> 0:07:32.720
<v Speaker 1>the domain name. But the baseball team would not succeed

0:07:33.160 --> 0:07:37.880
<v Speaker 1>because of the timeline when the roller derby team registered

0:07:38.080 --> 0:07:42.280
<v Speaker 1>Cleveland Guardians dot com. So unless the baseball team resolves

0:07:42.280 --> 0:07:45.520
<v Speaker 1>that with the roller derby team reaches some resolutions, the

0:07:45.640 --> 0:07:50.920
<v Speaker 1>rollery team is free to continue using that domain Facebook page.

0:07:51.320 --> 0:07:55.400
<v Speaker 1>All of that. You can file trademark complaints with Facebook.

0:07:55.440 --> 0:07:59.480
<v Speaker 1>But but again, in this circumstance, Facebook would not side

0:07:59.600 --> 0:08:03.600
<v Speaker 1>with the baseball team. You know, there's a legitimate question

0:08:04.160 --> 0:08:09.240
<v Speaker 1>about whether or not the roller derby team abandoned the

0:08:09.280 --> 0:08:13.960
<v Speaker 1>bark within the legal standard of the Land of Federal

0:08:14.040 --> 0:08:17.840
<v Speaker 1>Land of Trademark Act, And if there were to be

0:08:18.200 --> 0:08:24.120
<v Speaker 1>a finding of abandonment, then it would be possible for

0:08:24.400 --> 0:08:30.200
<v Speaker 1>the baseball team to assert rights against the roller derby team,

0:08:30.520 --> 0:08:33.000
<v Speaker 1>but I think the domain name is is a real,

0:08:33.200 --> 0:08:37.120
<v Speaker 1>real hard one. Let's say the baseball team or the

0:08:37.200 --> 0:08:40.480
<v Speaker 1>roller derby team decide to take this this to trial.

0:08:40.559 --> 0:08:43.840
<v Speaker 1>What's the issue at trial? In the United States, the

0:08:44.080 --> 0:08:49.400
<v Speaker 1>party that makes the first trademark use sponified trademark use

0:08:49.920 --> 0:08:56.120
<v Speaker 1>is entitled to exclusive right in connection with any good, services,

0:08:56.320 --> 0:08:59.840
<v Speaker 1>or business that would cause a likelihood of confusion. So

0:09:00.400 --> 0:09:04.679
<v Speaker 1>the issue in infringement is likelihood of confusion? Is the

0:09:04.960 --> 0:09:09.760
<v Speaker 1>use for a roller derby team and however they use it,

0:09:10.120 --> 0:09:14.280
<v Speaker 1>and the use of the mark by the baseball team

0:09:14.320 --> 0:09:17.880
<v Speaker 1>if those two parties use that market at the same time,

0:09:18.440 --> 0:09:21.960
<v Speaker 1>is the public likely to be confused when they see

0:09:22.040 --> 0:09:27.040
<v Speaker 1>Cleveland guardians as to the source or origins or association

0:09:27.520 --> 0:09:32.240
<v Speaker 1>of those products, goods, or services. And likelihood of confusion

0:09:32.559 --> 0:09:35.920
<v Speaker 1>varies by what court, what part of the United States

0:09:35.960 --> 0:09:39.840
<v Speaker 1>you're in, but it's always an amalgamum of a number

0:09:39.880 --> 0:09:45.000
<v Speaker 1>of factors. It's a fairly complex factual and legal issue.

0:09:45.520 --> 0:09:50.680
<v Speaker 1>Were it to go to court, litigation would take years.

0:09:50.840 --> 0:09:54.160
<v Speaker 1>So could they settle? Could they make a coexistence agreement?

0:09:54.440 --> 0:09:59.160
<v Speaker 1>For example? Yes? So a coexistence agreement is when the

0:09:59.200 --> 0:10:02.400
<v Speaker 1>parties get to other and they say, with respect to

0:10:02.520 --> 0:10:05.800
<v Speaker 1>mark that seem to conflict, they say, this is gonna

0:10:05.840 --> 0:10:08.880
<v Speaker 1>be your lane, and this is gonna be my lane.

0:10:09.120 --> 0:10:12.200
<v Speaker 1>And we think that if we take these separate lanes

0:10:12.520 --> 0:10:16.360
<v Speaker 1>that there won't be any public confusion. Let if we

0:10:16.520 --> 0:10:19.559
<v Speaker 1>find as time goes along, if there is some confusion,

0:10:19.600 --> 0:10:21.680
<v Speaker 1>will come back and we'll work through it. We'll work

0:10:21.720 --> 0:10:27.439
<v Speaker 1>together to avoid confusion. Coexistance agreements are very, very common

0:10:27.520 --> 0:10:32.880
<v Speaker 1>in trademark disputes because trademark damages are not easy to get.

0:10:33.160 --> 0:10:36.480
<v Speaker 1>I mean, if it's the situation where it's not a counterfeitter,

0:10:36.920 --> 0:10:41.520
<v Speaker 1>there's not a bad guy involved. The smart business decision,

0:10:41.800 --> 0:10:44.640
<v Speaker 1>if you can get it, is to reach some sort

0:10:44.679 --> 0:10:48.480
<v Speaker 1>of agreement. And here is one of those situations where

0:10:48.520 --> 0:10:51.400
<v Speaker 1>there's not a bad guy. Here. You have, at least

0:10:51.400 --> 0:10:54.200
<v Speaker 1>on the face of it, two sort of innocent parties

0:10:54.240 --> 0:10:57.400
<v Speaker 1>who have found themselves in a trademark dispute. And when

0:10:57.440 --> 0:11:01.080
<v Speaker 1>that happens, really the best thing for parties to do

0:11:01.320 --> 0:11:04.679
<v Speaker 1>is to try and reach some sort of resolution. Thanks Marsha.

0:11:04.960 --> 0:11:08.000
<v Speaker 1>That's Marcia Gantner of Daikama Gossip, and that's it for

0:11:08.000 --> 0:11:10.720
<v Speaker 1>the edition of the Bloomberg Lawn Show. Remember you can

0:11:10.720 --> 0:11:13.680
<v Speaker 1>always get the latest legal news honor Bloomberg Lawn podcasts.

0:11:14.120 --> 0:11:17.200
<v Speaker 1>You can find them on Apple Podcasts, Spotify, and at

0:11:17.240 --> 0:11:21.440
<v Speaker 1>Bloomberg dot com, slash podcast slash Law. I'm June Grosso

0:11:21.559 --> 0:11:23.160
<v Speaker 1>and you're listening to Bloomberg