Esports Law: Some Steps For Proper Protection of An Esports Team and Organization’s Name
By Justin M. Jacobson, Esq.
With the rising global esports market and the substantial investments received by some esports organizations, it is crucial for these entities to properly protect and maintain their team name. An esports organization’s name is typically the basis of their entire “brand” and acts as a way to distinguish one competing entity from another. In esports, proper name protection is particularly important because a competitive gaming organization’s name is utilized on all of the team’s jerseys, social media accounts, merchandise, websites, and on any streaming platforms. In order to achieve this, a team owner may utilize trademark law to receive the exclusive rights to use a specific name for the goods or services that they provide. In fact, trademark protection can apply to a word, an entire phrase or slogan, a logo or other unique design, as well as a scent, a sound or even a combination of all of these elements. In the last few years, it has become an industry-wide trend for many prominent professional esports organizations and teams to apply and own marks in their name. Some of these teams include “Team Liquid,” who owns a variety of registrations in several classes (U.S. Registration Nos. 5,237,182; 5,299,681; 5,299,682; 5,338,391). In addition, other entities also have registrations protecting their team name, including “FNATIC” (U.S. Registration No. 4,677,398); “Evil Geniuses” (U.S. Registration No. 4,568,877 for the word mark and Registration No. 4,568,878 for the stylized logo); “Splyce” (U.S. Registration No. 5,250,213); “OpTic Gaming” (U.S. Registration No. 4,870,601), “Cloud9” (U.S. Registration No. 5,426,731); “Counter Logic Gaming” (U.S. Registration No. 4,417,823), “Complexity” (U.S. Registration No. 5,315,085); and, “Flyquest” (U.S. Registration Nos. 5,697,874; 5,280,553; 5,697,873). In addition, Immortals Gaming Club has applied for trademark protection in its name, logo as well as for its “IGC” mark (U.S. Serial Nos. 88/355,897; 88/355,908). It is clear that such protections may be beneficial to their business from the fact that so many major esports organizations have already undertaken the actions of filing trademark applications to protect their name in a variety of classes.
Since esports teams are global entities that compete and operate in many countries across the world, a United States-based gaming organization may apply for trademark protection in the U.S. at both the federal and the state levels. They may also look to apply internationally to secure rights in other countries through international trademark treaties, such as the Madrid Protocol. In particular, the Madrid Protocol permits an entity with an existing U.S. application or registration to apply for foreign trademark protection in other signatory countries around the world. This process eliminates the need for a team to apply for brand protection in every country that it operates in with separate legal counsel in each country.
However, prior to preparing a trademark application for a team name, it is prudent for an esports organization to conduct a trademark screening search. A screening search is used to determine the availability of the particular name as well as to evaluate any confusingly similar marks that may block the organization’s use of a selected mark. Once a search is conducted and the name is cleared, an application can then be filed. Alternatively, if a team has not begun utilizing the mark prior to securing a registration, the organization may instead file an “intent-to-use” application to “reserve” the name. The team must then actually “use” the name in U.S. commerce within six months after a Notice of Allowance is issued. If the organization has not used the team name by the time this initial period expires, an extension of time to submit the Notice of Allowance must be filed. This extension prolongs the deadline to use the team name so that the organization can continue to reserve it until they successfully use it in commerce. A failure by the applicant to file a Notice of Allowance or an appropriate extension, could lead to the team forfeiting their application.
Generally, an esports organization might protect the team’s name as well as their unique logo. In these instances, it is important to be aware that a logo and a team name are two distinct trademarks. Therefore, two separate trademark applications must be filed in order to protect both the organization’s logo as well as their name. One application must be submitted for the organization’s name as well as the filing of an additional one to protect their logo design. This is true, even if the logo design already includes the team’s name in it.
When preparing an application, there are a variety of classes of goods that an esports team might apply for protection in. These categories might include the classes that they are currently operating in as well as ones that they might intend to use or expand into in the future. One potential relevant class could include International Class 041 for services such as “entertainment services, namely, participation in video game competitions” or for “organizing and conducting competitive and non-competitive games in the field of video games.” Additionally, an esports organization might also apply for protection in International Class 009 for different types of computer equipment and peripherals, such as “computer hardware; computer keyboards; computers; computer monitors; computer mice; mouse pads.” An esports organization might also apply to be registered in International Class 025. This particular class is for various clothing and other merchandise items, such as t-shirts, hoodies, pants and hats. Another potentially applicable classification utilized by an esports team might be International Class 035. This class is for the provision of “endorsement and advertising services, namely, promoting the goods and services of others.” While these are only a few relevant ones, there are many options that a gaming organization may utilize to fully protect their “brand.” All of which are listed here.
In addition to a valid trademark registration providing the registrant with valuable rights in the name and in any protected logo design, the owner has a duty to police and monitor any unauthorized or infringing uses of their mark. In particular, a registration provides the owner with the right to prevent any other individual or other team from utilizing the protected esports organization’s name or logo without specific authorization. This includes preventing another party from competing under a protected team’s name, even if the other organization competes in a different gaming title or league than the one that the trademark owner is involved in. This also means that a team must take active steps to stop any infringers, which might include the sending of “cease and desist” letters to the appropriate parties.
A registration may also permit the mark owner to file an infringement claim with various social media platforms to retrieve or block an infringing account. In fact, many popular social media platforms, including Facebook, Twitter, Instagram, YouTube and Twitch, all have trademark protection mechanisms available to assist trademark owners. A valid registration also enables the owner to contact the United States Customs and Border Patrol to prevent the importation of any infringing or counterfeit goods with the team’s name or logo on it as well as stopping any products containing a logo that is confusingly similar (i.e., a “rip-off”) to the team’s mark.
Furthermore, the proper protection of a competitive gaming organization’s name may also be required for any licensing deals. This might include an arrangement for licensed products developed by a third-party, such as official team merchandise or gaming peripherals. The reason being it may be difficult to ensure that the licensing party actually has exclusive rights to the use the name or logo without documented proof of exclusive ownership that a registration substantiates.
After a trademark application has been successfully registered, the esports organization still has on-going obligations. One such requirement is to renew the registration to ensure that it is not cancelled. There are two renewal periods for a registered mark. The first renewal is due after the first five years of the mark’s registration. After this initial 5-year renewal, the next one is due five years after that, which is the 10 year renewal. After the original 10-year trademark renewal, the owner must continue to renew the registration every 10 years to keep it in force to continue to preserve their exclusive rights in the name.
If a trademark owner fails to renew their mark within this requisite time period, the mark will be considered “dead” and the owner’s registration will be cancelled. If a registration is cancelled, the owner will have to re-apply in order to re-register the name. This would require the filing of a new application with additional filing fees to protect a mark that was already previously registered. Additionally, the registrant loses the priority and the seniority that the existing registration had already obtained.
Overall, as the competitive gaming scene continues to expand, the proper protection and maintenance of an organization’s name becomes even more important. A team’s failure to timely and adequately protect a name may result in them finding out that another competitive organization is using a similar one which may prevent the organization from participating in a tournament in a specific country that a previous owner has rights to. In the worst case, the esports organization may be forced to totally cease any and all use of the name and start with an entirely new one. This could set the team back both financially and with their fans as they presumptively spent time and resources building a following and a known “brand” under this name.
This article is not intended as legal advice, as an attorney specializing in the field should be consulted.
© 2020 The Jacobson Firm, P.C.