Esports Law: What Makes Gamer-Tags and Team Names Such Valuable Trademarks?
By Justin M. Jacobson, Esq.
With the rapid international expansion and increased profitability of esports, including a surge in the number of players and teams involved in the competitions, the need to properly protect one’s “brand” and its associated intellectual property grows even more important every day. In the United States, protection for a particular mark or “brand” is provided by trademark law. It is essential for esports competitors to ensure they address trademark rights early in their career in order to properly exploit and monetize their products and services within this realm.
A trademark registration provides the owner with the exclusive right to utilize a particular “mark” in commerce to differentiate their goods or services from those provided by others. A “service” mark is a mark used in connection with providing a particular service (e.g., participation in video game competitions, talent management services). Protection applies to a particular word, logo, slogan, phrase, smell, sound or a combination of these, used in relation to specific goods or services. This means that trademark protection is provided for a particular “name,” known as a “word mark” or for a particular logo, known as a “stylized mark.” In the esports context, this means that there are separate trademarks, which each require a separate application for the team name, the team’s logo, the user’s in-game name or “gamer-tag” as well as a user’s unique “gamer-tag” logo (if one exists). This is true, even if the logo already includes the team or player’s “gamer-tag” in it.
Initially, a trademark screening search should be conducted first to determine the availability of the name and to assess the existence of any other confusingly similar marks that may block your application. Once a search is conducted and a name is cleared, a federal or state trademark application should then be filed with the appropriate state department or with the United States Patent and Trademark Office (“U.S.P.T.O.”). An application can be filed for a mark that is currently in use, called an “actual use” application or for one that the owner intends to use, called an “intent-to-use” application. An intent-to-use application is filed prior to the actual use of the mark in commerce by the owner to “reserve” a particular name for specific goods or services. The applicant must then actually use the mark in commerce within six months after a “Notice Of Allowance” is issued by the U.S.P.T.O. or an extension to file a “Notice of Use” must be submitted to extend the deadline to complete the registration.
While the initial costs to search, prepare and file for a particular trademark may seem prohibitive, the benefit the owner receives as well as the potential pitfalls they avoid clearly outweighs the costs. Since official websites, merchandise and social media platforms, including Twitter, Facebook, Twitch, YouTube and Instagram, are essential streams of income for most prominent eSports players and teams, it is crucial that a trademark search is conducted prior to establishing and developing these platforms. This will assist in identifying any potential barriers to a name’s usage in these areas.
A valid registration of a user’s “gamer-tag” also provides the owner with additional protection. It provides the owner with the ability to actively police and prevent other individuals from “stealing” or otherwise impersonating established gamers. This includes preventing a non-owner from utilizing a protected gamer-tag in another game as well as protecting against an imposter adding a slight modifier, such as a number or letter, to an established gamer tag and then using it. For example, if “Deejayjustin” is a protected gamer-tag owned by a legendary “League of Legends” gamer and an imposter “Deejayjustin1” creates a YouTube account, there could be potential confusion if the imposter account begins transmitting “League of Legends” related content on this social media account. This potential consumer confusion could be prevented with a valid trademark registration, as the registration allows the filing of an infringement claim with various social media platforms, including Facebook, Twitter, Instagram, YouTube and Tumblr, to retrieve or block the infringing account. A trademark owner may also utilize a valid registration as a basis for filing an Anti- cybersquatting claim with ICANN to retrieve an infringing website domain name.
Furthermore, when a team or player desires to enter into a sponsorship arrangement, the existence of registered trademarks has almost become a necessity. This is due to the potential sponsor requiring some marketable, identifiable asset, such as a logo or team/player name, in order for the brand to receive the benefit of the sponsorship with the team or player. A registered mark also is required when discussing possible co-branded products, such as officially licensed team mousepads developed by a third-party. Without proof of ownership in a particular mark that registration provides, it would be difficult to ensure that the sponsor receives adequate protection in its exploitation of the co-branded product. Since registration provides clear information on who owns what mark and for what type of goods or services, the lack thereof, can become problematic and a barrier to business dealings with many third-parties.
The existence of a valid trademark registration for a gamer-name, team name and/or logo also provides the owner with the ability to license or sell the mark and the “good-will” associated with it. This has become the norm, where many top flight teams and competitors currently sell officially licensed merchandise bearing the gamer or team name. For example, esports team, “FNATICS” (U.S. Registration No. 4,677,398) owns a trademark registration, which facilitates entering into licensing agreements with third-parties as well as publicly distributing merchandise bearing their mark without worrying about liability. A valid registration also permits the owner to contact the U.S. Customs and Border Patrol to prevent the importation of any infringing or counterfeit goods bearing the protected mark or any goods containing marks that are confusingly similar to a protected mark.
In addition, failure by a team or player to register a trademark may cause confusion and potential legal disputes over who actually owns a name. For instance, the team may claim they own rights to a player’s “game-tag” as a result of the competitor competing for the team; however, a player can potentially protect against this by registering their “gamer-tag” prior to utilizing it in a competition. The player can potentially exclude assigning the rights to his name to the team he signs with or utilize this fact as a bargaining chip in negotiations, i.e., giving the team a license instead of an assignment to utilize a name in commerce. The lack of registration also could act as a stumbling block in prosecuting a potential infringer as another user could use the name first in another game; and, if the original mark is not protected, the original user will have no resource and could end up losing the mark entirely.
Ensuring that a team or player’s intellectual property is properly protected helps facilitate the team’s expansion into other geographic markets. For instance, the Madrid Protocol permits U.S. registrants to apply for protection in many other countries based on an existing U.S. application or registration. This also helps increase a team or player’s “worth” due to the inherent value that the registered marks brings to the “brand” (team or player) that a player without such protection would not possess.
While the benefits of trademark law are fairly well-known, many top teams and competitors fail to properly protect their intellectual property; however, there are some teams and players who have taken steps to protect their assets. For instance, protection has already been applied for or is currently provided for many professional eSports franchises. Some of these include “Evil Geniuses”, who have protected both the word mark (U.S. Registration No. 4,568,877) as well as the stylized logo (U.S. Registration No. 4,568,878) , “Splyce” (Serial No. 87,257,986), “SK TELECOM T1 PRO GAME TEAM” (Serial No. 87,132,064), “OpTic Gaming” (U.S. Registration No. 4,870,601), and, “Counter Logic Gaming” (U.S. Registration No. 4,417,823). Finally, a prominent gamer, Jonathan Wendel received protection for his gamer-tag, “FATAL1TY” (U.S. Registration No. 3,149,347). It is clear that many top esports teams are currently utilizing trademark law to receive additional benefits and protections for their brands; but, there are still many unique team names and gamer-tags that are not protected and should be.
There are a variety of classes of goods that a team or gamer may apply for. A few potential classes include, Class 041 for “Organizing and conducting competitive and non-competitive games in the field of video games,” or “Entertainment services, namely, participation in video game competitions.” Additionally, protection can be applied in Class 009 for computer equipment, including goods such as “computer hardware; computer keyboards; computers; computer monitors; computer mice; mouse pads.” A trademark can also be registered in Class 025, which includes various items of clothing and other merchandise, such as t-shirts, sweatshirts, pants and hats.
Finally, the ownership of a valid trademark registration could potentially be utilized to pursue sponsors or a tournament organizer for failure to pay a player or team. This has become a newsworthy issue as of late. It could be argued that the team and/or player permitted or otherwise “licensed” the mark for use by sponsors or organization in commerce for the advertising and promoting of the organization or sponsor. The failure by the entities to provide the negotiated for compensation could be tantamount to a breach; and, may even permit the owner to recover any damages they incur as a result of this breach. While this may seem far-fetched, a trademark registration may also act as a weapon in a player or franchise’s arsenal when pursuing owed tournament winnings or sponsorship monies.
In conclusion, many of the top esports franchises as well as some prominent gamers have begun registering and regularly exercising the rights associated with a valid trademark registration; but, many still do not. There are many benefits that an owner enjoys as well as many pitfalls that could be avoided by proper registration that these entities are missing out on.
You should always consult an experienced attorney in the field to understand the requirements and available options.
This article was reposted on The Esports Observer.
© 2017 The Jacobson Firm, P.C.