Their names are ubiquitous in esports: Faker (League of Legends); olofmeister (Counter-Strike: Global Offensive); N0tail (Dota 2); JJoNak (Overwatch).
These gamers are the Top Dogs in their respective games. The Wayne Gretzky’s of gaming.
While their given names (Lee Sang-hyeok; Olof Kajbjer; Johan Sundstein; Sung-hyeon Bang) may be known by only the most die-hard of gaming enthusiasts, their gamer tags hold the reputation that inspires fans and strikes fear into competitors. Through their widespread recognition, these tags also provide the players behind them an opportunity to exploit and monetize goods and services under their own personal “brand”.
Because of their commercial potential, as well as their quasi-symbolism of a player’s identity, a gamer tag is a valuable intangible asset. And, like any asset, it should be protected for the benefit of its owner. While different options are available, this post looks at protecting a gamer tag through trademark registration.
Why Protect a Gamer Tag through Trademark Registration?
A gamer tag can be viewed as a gamer’s “brand”. It’s the sign on the door of their shop that sells esports entertainment. It’s their own individual team. It’s their one-man band. Similar to how a corporation, sports team, or band may object to the use of their name by third parties, a gamer should desire exclusive control over their own tag.
Protection seeks to provide the player with control over the use of their tag. It is useful in a variety of situations, such as preventing unauthorized parties from selling merchandise adorned with the tag or precluding tournament hosts from using the tag in promotional materials.
Protection is available in Canada through both the common law and legislation, specifically the federal Trademarks Act, RSC, 1985, c T-13. Under the Trademarks Act, a registered trademark lasts for ten years, with the option to renew the mark every ten years afterwards.
Generally speaking, gamer tags can be registered as trademarks in Canada, provided the tag is not a surname, deceptively misdescriptive or clearly descriptive (e.g. “esportsplayer”), or confusingly similar to other registered trademarks.
Registering a gamer tag through the Trademarks Act grants the owner the exclusive right to use the tag across Canada for the goods and services designated in the registration. Common law protection, on the other hand, is limited geographically to the reach of the tag’s reputation. For example, if a tag has acquired a reputation exclusively in Toronto, the gamer may not be able to assert any rights with respect to his or her tag in Vancouver (admittedly, an unlikely scenario given the online nature of esports).
Registration will also block subsequent trademark applicants from registering names confusingly similar to the registered gamer tag. So, while “OWLegend1” may be registered as a trademark, “OWLegend11” would likely have a difficult time subsequently registering their similar name.
Finally, once a gamer tag is registered, the rights associated with the registration may be sold or otherwise transferred to a third party. These rights may also be licensed to manufacturers and promoters, to name but a few potential licensees. The ability to license a trademark provides the gamer with precise control over who or what uses their tag, an ability that can get messy when unregistered trademarks are at play.
With respect to the enforcement of rights, trademark registration provides an owner with legal remedies not available to an owner of an unregistered trademark, including Federal Court infringement actions. Federal Court actions may be necessary for a variety of reasons, such as a bootlegger ignoring requests to cease selling merchandise emblazoned with the registered tag.
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Gamer tags are extremely important in the world of esports. Trademark registration provides an element of certainty that is absent from other forms of protection. As players’ reputations and earning power grow, they should consider trademarking their emerging tags.
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