With the growing popularity of e-sports (multiplayer video-game sports competitions, often played by professional gamers for spectators–also stylized “eSports”), I’ve seen an increasing number of trademark disputes not only between video-game companies, but also between video-game companies and other non-electronics businesses selling physical goods or services.  It is interesting to observe the arguments regarding bridging the “virtual gap” between the physical world and the digitized world, in terms of whether consumers would actually perceive relatedness and confusion.

One example, and a timely update to one of my recent posts, was the potential dispute between Major League Baseball Properties, Inc. (“MLB”) and Blizzard Entertainment, regarding Blizzard’s Overwatch game. The logo used for the Overwatch game had a two-tone background with a silhouette of a figure, arguable with some similarities to MLB’s well-known blue-and-white logo with a white silhouette of a baseball player. As predicted, after filing a request for extension of time to oppose, MLB never followed through with an opposition proceeding. And it seems that MLB didn’t convince Blizzard to make any changes, as the Overwatch League mark appears the same–so a positive outcome for Overwatch there. It seems MLB wasn’t concerned enough about potential confusion in light of the gap between the parties’ goods and services; although, in my view, the lack of concern was probably influenced by the significant dissimilarities in the marks.

Another example recently in the news is a new enforcement action by Adidas (or as their marketing folks prefer, adidas). adidas is often in the news regarding its aggressive enforcement measures, as we’ve blogged about on numerous occasions (such as hereherehere, and here).

This one is interesting as, unlike many examples we’ve blogged about, the enforcement target is not another shoe or clothing company, using a physical similar design with three (or two, or four) stripes. Rather, the target here is the Turner ELEAGUE, which offers popular e-sports competitions.

The ELEAGUE design logo includes an “E” design consisting of three lines, that (arguably) appears similar to the adidas three-stripe design. Turner has applied to register its mark in connection with various types of digital media and software in the field of electronic sports (Application No. 87065837), as well as various types of marketing promotion services, retail store services featuring “clothing,” and “clothing for use in online virtual worlds” (Application No. 87065846). See the “E” design mark below applied-for by Turner, as well as the mark next to the word “LEAGUE” as it typically appears on Turner’s website.

A couple weeks ago, adidas filed an extensive Notice of Opposition (over 100 pages) against registration of Turner’s applications.  The primary goods offered by adidas, and identified in its trademark registrations, are clothing, apparel, footwear, and physical sporting goods. Nevertheless, as argued in the Notice of Opposition, adidas also licenses its mark to be used in video games (e.g., on virtual players’ clothing, and in virtual signs and sports fields), and sponsors electronic sporting events and teams, all of which is helpful for the relatedness argument.  In addition, to the extent that Turner’s ELEAGUE application seems to also cover real-world “clothing,” rather than only  “virtual” clothing, adidas has a stronger case for relatedness. In industry news there have been some skeptical reactions to the dispute, but to be fair, the Notice of Opposition makes some decent relatedness arguments, so we’ll see how this one turns out. No reaction yet from Turner, as the Answer to the Notice of Opposition is not due until November 19.  I’ll be watching this one with interest–stay tuned for updates.

 

 

  • James Mahoney

    Interesting case, Tucker. My knee-jerk reaction is that adidas is wise to object to this one. Couple of thoughts:

    For me, adidas and other sporting apparel companies are perceptually and emotionally linked to actual activity, rather than just the items of clothing. Though not adidas’s, Just Do Is a prime example of this kind of parallel association.

    We’re also in a time where the virtual and the real are rapidly morphing into a continuum of experience. Combine that convergence with the traditional business strategy of “extending the brand” in directions that logically capitalize on reputation, relevance, etc., and it’s not beyond the realm of possibility that adidas could get into the virtual game itself at some point. In that case, its trademark would be a significant differentiator and value signal.

    Given all this, adidas (and everyone else) is smart to protect all possible beachheads in areas where they may logically expand.

    Incidentally, regarding your comment about marketing’s preference for adidas, a number of years ago, I had a client who had adidas as a customer. When I said ah-DEE-das, as we do in the US, I was firmly corrected that the proper pronunciation is AD-dee-das. I don’t think adidas actually cares how we pronounce it, as long as we keep buying the stuff (see ee-KAY-ah).

    • Tucker Chambers

      Thanks for your comment, James! I totally agree that any gap between virtual and real-life products is narrowing, and becoming more linked every year in the minds of consumers. So I do think the objection by adidas make some sense. And thanks for that interesting tip on that correct pronunciation, never realized that I was pronouncing it incorrectly as “ad-DEE-das.” I was curious so I looked a bit more, and found much discussion online. Apparently “adidas” derives from the name of the company’s German founder — Adolf Dassler (nickname “Adi”), very interesting. http://www.businessinsider.com/how-to-pronounce-adidas-2016-12