Is the word “RIOT” now so attached to the company Riot Games that no other company can use the word in its name? Riot Games seems to think so based on its recent initiation of a lawsuit in the U.S. District Court for the Central District of California.
The esports giant that developed and publishes the game League of Legends (LoL) has filed suit against Riot Squad Esports LLC on three main grounds: (1) infringement of a federally registered trademark; (2) false designation of origin; and (3) unfair competition. It claims that Riot Squad Esports LLC has misappropriated one of Riot Games’ most valuable assets — its well-known RIOT brand name.
Riot Games is attempting to make the argument that Riot Squad wants to use the RIOT name to confuse consumers into believing that there is some association between Riot Squad and Riot Games. The company claims that it has invested millions of dollars and a lot of time, effort and resources in developing and promoting its RIOT name and logo, especially in connection with video games and esports.
Furthermore, Riot Games points to its five trademark registrations with the U.S. Patent and Trademark Office for the marks RIOT and RIOT GAMES. These registrations cover a wide variety of goods and services, including entertainment services, clothing, toys and games, and arranging and conducting esports competitions.
Riot Games is benefitted by the fact that some of its registrations have been deemed incontestable, which is a status that certain marks may obtain after they have been registered with the U.S. Patent and Trademark Office for a period of five years. Applicants must demonstrate that they have been using such marks in commerce for those five consecutive years.
Incontestable status essentially provides the applicant with comfort in knowing that the mark is immune from legal challenge. It provides extra strength to a company such as Riot Games, which seeks to demonstrate that its mark has power within the relevant industry and among the relevant consuming public.
Meanwhile, Riot Games alleges that Riot Squad is in its first year of operation. It also makes a case for Riot Squad emphasizing the word RIOT in its design mark in an apparent effort to palm off on the goodwill that Riot Games has developed over numerous years of being in business.
Riot Games’ most important argument centers on the fact that Riot Squad is doing business in the same exact industry that Riot Games finds itself in. When one hears the word RIOT in connection with the esports space, that person will typically think the reference is to Riot Games. If Riot Squad is emphasizing the RIOT component of its name, then it is quite possible that it will lead to some confusion.