On July 23, 2021, the Cleveland Indians announced that the team is changing its name to the Cleveland Guardians. Not long after the announcement, speculation grew surrounding how a roller derby team called the Cleveland Guardians might have a potential trademark infringement claim
As I told Yahoo!Sports, there is zero chance that Cleveland’s baseball team did not address this issue before selecting the new name. More than likely, an agreement was reached between the roller derby team and the MLB and Cleveland baseball team, before the announcement of the name change.
Though there has been much chatter regarding the roller derby team and whether the baseball team was aware of them, this story just got infinitely more interesting. As you probably already know, all trademark filings are public and get uploaded to the USPTO’s website five days after the application is submitted.
As the Cleveland Indians submitted their U.S. application on the same day as they announced the new name, I was able to take a look at the application on July 28, only to find out that it was not the first application for the name “Cleveland Guardians” that they filed.
On April 8, 2021, the Cleveland Indians Baseball Company filed a trademark application for the name “Cleveland Guardians” in Mauritius. “Mauritius?” you may ask while scratching your head, “Where the heck is Mauritius – is it even a real place?”
Not only is Mauritius a real country in East Africa, but it’s also a beautiful island nation full of pristine beaches, and it just happens to be a part of the Paris Convention for the Protection of Industrial Property. The United States and 175 other countries (as of January 2019) are also members of this treaty.
What does something called the Paris Convention have to do with a U.S. baseball team, a once unknown roller derby team, trademarks, and a beautiful little island nation? Well, signed in March of 1883, the Paris Convention is one of the first intellectual property treaties and offers three main categories of protection, however, the relevant protection, in this case, refers to the first filing date.
If a trademark is filed in any of the countries within this treaty, it can then be applied for in any of the other applicable countries, within six months of the original filing date, and all other applications will be postdated to the original filing date. While that seems like quite a mouthful, the execution is very simple.
The trademark “Cleveland Guardians” was filed on April 8, 2021, in Mauritius and was also filed in the U.S. within the six-month time frame (they technically had until October 8, 2021, to file), meaning that the U.S. application has been postdated to the April 8 date too.
If that seems like this was a lot of work and effort to go through, just to have an earlier filing date, you’re not wrong, but there’s also solid legal reasoning behind it. Remember how all filings become public within five days in the United States? Not all countries have a transparent trademark system, allowing filings to be kept secret. Most notably, until now, has been Jamaica.
If a client has a mark that they want to protect, but need it to remain a secret for some time, it’s common for a knowledgeable trademark attorney to recommend that their client files in a country within the Paris Convention, but with a nontransparent trademark system.
That begs the question, why would the Cleveland Indians want to keep their new name under wraps? There’s a variety of reasons, but the most likely is that they wanted to have some time and privacy to work out an agreement with the roller derby team, before announcing the name change.
Do you need to file a mark but also keep it quiet? The best way to ensure that your application is correctly and promptly filed is by hiring experienced trademark counsel that understands the integral role that the Paris Convention can play in your trademark rights. If you have any questions about trademarks, getting started with your application, or addressing filings in foreign countries, please contact an attorney from Gerben IP today.