Protect Your Gamer-Tag: Proper Due Diligence and Brand Protection Techniques for Professional Gamers, Streamers, and Content Creators in the US
By Justin M. Jacobson, Esq.
In today’s global esports and video game business, it is vital that professional esports players, gaming streamers and content creators, and on-air broadcast talent and esports casters as well as the legal practitioners advising them are aware of a variety of available legal protections. One crucial legal shield available to gaming influencers are the statutory safeguards established under trademark law which can be utilized to protect a gamer’s personal brand. Since an individual’s gamer-tag or gaming username or “ID” is similar to a musician’s stage or artist name, it is a valuable business asset that must be properly secured prior to commercial usage of it. Accordingly, any gamer attempting to monetize and build a professional career and a business around a particular gamer-tag or username should ensure that the party can properly and legally generate revenue with it prior to utilizing the selected name.
Examples of Trademark Law Used to Protect a Gamer-Tag
As mentioned, professional gamers, esports casters, and other gaming influencers, including streamers and content creators may utilize trademark law in the United States and in other countries to protect their in-game or caster name as well as their unique logo designs, among other protectible assets. While most professional gamers, streamers, and casters are not securing a registration in their trade name (their gamer-tag or talent name) or in their monetized logo designs, there has been a trend of some gaming professionals and content creators securing these rights to properly protect their individual personal “brand.”
For example, gaming streamer Tyler “Ninja” Blevins had applied for trademark protection for a stylized logo featuring the wording “Ninja” for clothing and apparel items.[i] Another streamer Benjamin “DrLupo” Lupo received trademark protection for his gamer-tag in a variety of classes as well as for his unique “D” logo.[ii] Similarly, prominent gaming influencers Timothy “TimTheTatman” Betar and Turner “TFUE” Tenney both registered their respective gamer-tags [iii]. In addition, competitive gamers Jonathan “FATAL1TY” Wendel secured exclusive rights to his gamer-tag “FATAL1TY” and Matthew “Nadeshot” Haag protected his moniker “NADESHOT” in a variety of classes, including for “dietary and nutritional supplements,” for “video game controllers,” and for “live performances by e-athletes and competitive gamers.”[iv] Finally, professional gamer Michael “Shroud” Grzesiek registered his gamer-tag for a variety of goods and services including for computer peripherals and accessories, for clothing and apparel items, and for entertainment services including providing “live show performances featuring video game playing.”[v]
Benefits of Conducting a Trademark Screening Search
Generally, prior to attempting to protect and utilize a specific name, it is prudent for a professional gamer or a practitioner assisting the talent to conduct a trademark screening search to determine the availability and potential hurdles to the commercial usage of their chosen gamer-tag. This procedure is beneficial to identify any existing names that might be the same or confusingly similar to the selected gamer-tag and that might act as a barrier or expose the gamer to potential liability for using the name.
Consequently, an individual’s failure to conduct the proper due diligence and investigation into the availability and protectability of a selected gamer-tag prior to commercialization can lead to some severe consequences and potentially extensive liability. For example, the usage of a mark (gamer-tag) that is the same or confusingly similar to another registered mark for the same or similar goods or services could expose the secondary user to potential legal action. For instance, these infringing activities might cause them to receive a formal cease and desist notice for purported infractions such as trademark infringement, tarnishment, blurring, or any other violations. Similarly, the unauthorized user might even possibly be subjected to a trademark infringement or other lawsuit.
Therefore, it is highly advisable that a gaming talent initiate a proper pre-usage inquiry into the availability of a tradename to identify any potential hurdles to using a selected gamer-tag in an effort to try to avoid any potential legal disputes. In fact, in addition to those mentioned above, there is also the possibility of other adverse actions against the gamer such as the individual being subject to trademark Opposition and Cancellation proceedings before the Trademark Trials and Appeals Board (T.T.A.B.) in certain instances or the applicant might receive a formal Letter Of Protest submitted to the United States Patent and Trademark Office (U.S.P.T.O) contesting a filed application.
In fact, there have already been several instances of gaming content creators and influencers as well as other esports businesses having to change or otherwise alter their selected gamer-tag or tradename in light of other senior rightsholders. For example, gaming content creator Marrissa “Digitalprincxss” Cloutier purportedly received a cease-and-desist notice from the owner of a similar mark in the same entertainment services category which demanded that the creator change her username and mandated that she rebrand all her social media channels from “Pokeprincxss” to “Digitalprincxss” to avoid further liability and action from the mark owner (which she did).
Actual Use vs. Intent to Use Applications
Accordingly, if a proper pre-screening search is conducted and the mark seems clear, an application can then be prepared and filed with the U.S.P.T.O. for federal protection in all fifty states as well as potentially filed in individual states for any and all relevant class(es) of goods. In the United States, a trademark application may proceed on an “actual-use” or an “intent-to-use” basis.
This fact means that an application can be filed for a mark that is currently in use (an “actual use” application) or for one that the owner intends to use (an “intent-to-use” application). An “intent-to-use” application is one that is filed by a party prior to utilizing a name to “reserve” it for a specific good or service. The mark must then be used by the owner in commerce for the selected good or service. After this initial usage in trade, a Statement of Use (“SOU”) must be filed with the U.S.P.T.O. within the proscribed time periods.
International Registration of Trademarks with the Madrid Protocol system
Additionally, it is also important for professional gamers and their representatives to be aware that a logo and a gamer-tag are two different protectible assets. This distinction means that two separate applications can be prepared and filed in order to separately protect both a gamer’s logo as well as their gamer-tag or caster name. As a result, the owner could receive the exclusive ownership rights to the name as word mark for the usage of it in any logo design developed in the future as well as obtain separate protection for a specifically submitted logo design.
Similarly, a gaming influencer, creator, or caster attempting to work and monetize their brand in other countries might also explore and apply for trademark protection in these other nations. For instance, a United States based professional gaming talent might utilize the Madrid Protocol system to apply for trademark protection in any signatory countries that the individual intends to monetize and utilize their gamer-tag in.
In these cases, it is crucial that an U.S. trademark applicant applies for protection in any other Madrid Protocol countries within six months of a U.S. trademark application filing date so that the applicant can receive a “priority claim” which means that they can utilize the earlier U.S. filing date for the international application’s filing date.
Different Potentially Applicable International Classes of Goods
When preparing a trademark application, the individual or business owner must select and apply for protection of a selected mark for the goods and services that they are currently offering or intend to. The goods and services offered by an applicant are classified into standard categories that are referred to as “International Class of Goods” with each class of goods corresponding to a different grouping of products and services.
Accordingly, while there are many existing International Classes of Goods that an applicant can choose from, there are a few select ones that a gamer, streamer, or caster might typically apply for protection in. One of these classes might include International Class 041 for “entertainment services, namely, participation in video game competitions” and for other live and recorded entertainment services. An influencer might also protect their gamer-tag in International Class 009 for several types of computer equipment, such as “computer hardware; computer keyboards; computers; computer monitors; computer mice; mouse pads.” In addition, a professional gamer could secure protection in their gaming name in International Class 028 for “gaming mice” or “gaming keyboards.”
A gamer-tag or logo might also be registered by its owner in International Class 025. This class encompasses various clothing and other merchandise and apparel items, such as t-shirts, hoodies, shorts, bandanas, and hats. Another potentially applicable goods classification for a gaming influencer might be International Class 035. This particular class is for the provision of “endorsement and advertising services,” including “promoting the goods and services of others.” Consequently, these are just a few select International Classes of Goods that might be appropriate for a professional video game talent as there are many other trademark classes that an applicant can choose from and that may be applicable to their personal brand and their business ventures.
Some Benefits of Trademark Registration Ownership
Accordingly, a trademark registration in a gamer-tag or a logo provides many unique benefits for its owner. One of these is that the gamer has exclusive rights to the name for the selected categories of goods. This fact means that no other person or company may use the same name or a confusingly similar one for the same goods or services as those covered by the registered mark. Another advantage is that the federal registration permits the owner to file an infringement claim with many top social media platforms to takedown, retrieve, or otherwise block an infringing or impersonating account.
Accordingly, a valid trademark registration enables a party to remove any unauthorized content featuring the protected mark including utilizing the account reporting procedures on platforms such as Facebook, X (formerly Twitter), Instagram, YouTube, and Twitch. 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 bearing the protected mark as well as any goods containing marks that are confusingly similar to the registered one (i.e., “knock-offs”). This protection is beneficial as it provides a remedy to try to prevent the sale of “fake” or other unauthorized goods containing the gamer’s name or logo.
Similarly, the existence of a valid trademark registration provides for the easy validation and facilitation of the licensing of the owner’s intellectual property (IP) to a third-party business or company. In particular, this benefit is valuable to a professional gamer when entering into third-party licensing agreements for use of their IP as the registration substantiates the owner’s exclusive ownership rights in the licensed mark for the specific goods or services. Accordingly, this assurance provides further protection and security for a third-party by ensuring that the licensee legally possesses the rights that they desire to acquire from the licensor.
For example, this situation might be applicable if a gaming peripheral company is manufacturing a gamer-branded product. Finally, in addition to the protections available for a professional video game talent under any applicable right of publicity and other related “name, image, and likeness” (NIL) rights, the existence of a valid trademark registration provides a notable gaming influencer with additional causes of action and potential recovery options and grounds beyond those existing under a person’s right of publicity in the cases of unauthorized usage of their name including for trademark infringement.
Trademark Owner’s Continued Maintenance and Renewal Obligations
Once a valid registration is secured by a gaming influencer, it is important for the owner to properly maintain the registration as well as to police and prevent any unauthorized third-party usage of the gamer-tag. For instance, an owner must ensure that they file a timely renewal of a mark to ensure that the registered trademark will not be cancelled by the U.S.P.T.O.
However, if a registration is cancelled for failure to timely renew it or if it is deemed “abandoned” for failing to adequately police third-party infringing uses of it, the owner will lose the exclusive rights in the mark as well as the priority and seniority that the registration had obtained through the continuous use in commerce for the listed goods or services (15 U.S.C. § 1127). Consequently, the owner would then have to re-apply to re-register the trademark, including paying additional filing fees for a mark that was previously registered.
Specifically, in the United States, there are some unique required renewal periods for every registered trademark that all competitive gamers, streamers, content creators, influencers, and their advisors must be aware of. The first one is the five-year renewal which is due no later than five years after the mark’s initial registration date. After this first renewal filing, the next renewal is the ten-year renewal (the second renewal), which is due five years after the proceeding trademark renewal.
Following the second renewal, the registrant must continue to renew the mark every ten years to keep the registration in force. This requirement means that a professional gaming talent must timely renew any existing registration to ensure that they continue to possess the rights that they desire and have already acquired in the name. Overall, while the up-front costs and pre-screening clearance (the costs for a search and for the preparation, filing and prosecution of a trademark application) may seem pricey and unnecessary, as the gamer aims to grow and monetize their individual “brand,” the benefits that the influencer receives from protecting and establishing formal rights in their gamer-tag outweigh the money invested.
In fact, the added protection and ability to police infringing and unauthorized uses of a protected gamer-tag as well as to combat damaging impersonations and harmful imposters provides additional value to an individual. As always, the best advice is to obtain counsel from a competent professional experienced in the legal field and the industry to understand all the available options and to ascertain the best way to proceed to protect a gamer’s selected name and associated brand
[i] <NINJA DESIGN LOGO>, U.S. Serial No. 98106683.
[ii] <DRLUPO>, U.S. Registration No. 5,970,881; <D DESIGN>, U.S. Registration No. 5,970,912.
[iii] <TIMTHETATMAN>, U.S. Registration No. 6,298,369; <TFUE>, U.S. Registration No. 6,115,926.
[iv] <FATAL1TY>, U.S. Registration No. 3,149,347; <NADESHOT>, U.S. Registration No. 5,540,561.
This article was originally posted on Esports Legal News.
This article is not intended as legal advice, as an attorney specializing in the field should be consulted.
© 2024 Justin Jacobson Law, P.C.