Intellectual Property Attorney Takes on Major League Baseball
Following Cleveland’s Major League Baseball (“MLB”) team name change from the Cleveland Indians to the Cleveland Guardians, an intellectual property attorney in South Carolina has submitted a new U.S. trademark application for CLEVELAND INDIANS for clothing goods, and Petitioned to Cancel the Cleveland Guardians’ still-existing registration for the old team name.
As pointed out in the Petition, the Cleveland Indians baseball team announced on July 23, 2021 that it was changing its name to the Cleveland Guardians, a decision largely in response to protests from Native Americans about using their culture for baseball teams and for the Chief Wahoo caricature. As stated by the Cleveland Guardians’ Chairman, John Dolan:
“Hearing firsthand the stories and experiences of Native American people, we gained a deep understanding of how tribal communities feel about the team name and the detrimental effects it has on them. We also spoke to local civic leaders who represent diverse populations in our city and who highlighted the negative impact our team name has had on our broader population and on under-represented group across our community.”
By changing their team name, the intellectual property attorney claims that they have abandoned their CLEVELAND INDIANS trademark and are no longer entitled to its use for the clothing goods that the intellectual property attorney plans to sell in association with the trademark.
Under federal trademark law, specifically 15 U.S.C. 1127, abandonment of a trademark occurs “When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment.”
It has not been 3 consecutive years since the decision to change names, but the intellectual property attorney claims that the Cleveland Guardians have discontinued the mark and do not intend to use it in the future.
If the intellectual property attorney is correct, then he could have a valid claim to cancel the CLEVELAND INDIANS trademark registration. However, if the Guardians sells CLEVELAND INDIANS apparel as some sort of vintage line, the intellectual property attorney’s claim will likely fail.
Special thanks to our Law Clerk, David Stewart, for the drafting of this blog post.