A guild trademarks its name
I actually heard about this a while ago, but now that it’s on their website, I guess I can post about it.
The Syndicate® is a long-standing guild — they just celebrated their 10th anniversary (I got a birthday card, in fact).
They have actually registered a trademark on their name, preventing other guilds from using the word “syndicate” as part of their names:
The Syndicate® has also Trademarked our name with regards to all things online gaming related. Because we own the trademark of The Syndicate® (and our logo and motto’s) it is not permitted that our name be used by any other gaming guild/clan/group or any other gaming related webpage without our expressed written permission.
Hmm, I wonder if by reporting the news, I am in violation.
In any case, this has to be a harbinger of the future. At some point, the intersection of player-created IP and provider-created IP starts to intersect in wonderfully weird ways, and this is one of them. This guild effectively just generated a new sort of customer service call.
What’s fascinating about this is that it’s a bottom-up thing: we’re not talking about Marvel going after City of Heroes. Rather, we’re talking about players declaring their own standing, and imposing restrictions on The Man.
To what extent can players use the real-world legal systems to create their own legal standing? This isn’t one of the ways I guessed would be employed. Yet here it is.
Interesting. But if you take some TOS or EULA word by word, isn’t it prohibited to use a trademarked name in a MMORPG? No matter if you actually own that trademark or not?
On the other hand – are GM’s of MMORPGs in the future required to check if the guilds in their games are the real owners of the trademarked guildnames?
As I’m from Germany – trademarks in combination with the internet have a very bad reputation over here, because everyone owning a trademark can go to a laywer and let him warn someone using the trademark without permission. This is called “Abmahnung” over here, I don’t know if there is something similar in english. If you get such an official warning you have to pay for the laywer (mostly a fee around US$500 up to US$2000) or go to court, which will cost much more in the worst case.
It’s a common pratice to register trademarks for everything over here and just make money by that. So I’m not sure what to think about guilds registering their names as trademarks.
Don’t worry, Raph, you’re not using the mark as a trademark.
At first glance, there would appear to be some interesting distinctiveness issues with the name. “Syndicate” as used to describe a guild certainly seems to be descriptive. After all, the two words are synonyms. That means that, in the exceedingly unlikely event that a dispute over this ever wound up in court, The Syndicate (R) would need to prove that gamers really associate the phrase “The Syndicate” with their guild. I imagine that had a trademark lawyer been advising them back when they started gaming in 1996, they’d have been gently advised to pick a different name.
Gah I’m scared! Can’t trademark Q though so I’m good to go. I really am scared about where this will take things. People have to always make everything so difficult. =(
My limited experience of trademark law suggests that the system is only interested in the rights of the holder if they are using the mark in commerce. From The Syndicate web site, it seems likely that they are running some services on something of a commercial basis, like their annual conference, and their trademark application states the date on which the mark was first used in commerce, so it looks like they would have no problem defending their mark. However I suspect that this is not true of many other guilds, which do not indulge in any commercial activity.
I am curious what might happen in a game which implements a democratic system for guild leadership. If The Syndicate set up in that game, and then at some point later control of the guild in that game is transferred democratically to other players, what will they do? If they can’t come to an amicable solution, who would they sue? The other players might be a difficult immediate target because of their effective anonymity, which leaves the publishers.
Perhaps a clause the the TOS forbidding use of a trademark whether authorised or unauthorised is the only safe thing for the owner of the game to do.
Wait till a major third party corporation starts to trademark as many popular guild names as it can then sell them to the highest bidding community.
Way to take the fun out of gaming Sydicate! Did they trademark their guild’s outfits/dress combinations too? Is that next? Their trademark persists into games they don’t even play and games not even come to market?
This inferiates me–aggah!! The Sydicate does not even sound like it would be trademarkable, as the pervious poster stated. It would be like naming ones corporation “The Corporation.”
Year 2020 new guild names will have to look something like ‘Joejoes12833’ in order to avoid trademark infringement.
Overall I hate this sort of stuff where protection of names and intellectual property actively stifles creativity (which is the exact opposite of the effect it is supposed to have).
If I were running an MMORPG I would simply ban the guild title “The Syndicate” and any titles using that name from my game. CoH had to do this with Marvel characters types. It is simply too difficult for the MMORPG to identify who is and is not allowed to use that name and I don’t see why they should bother. Especially if they are going to have anything like the “democratic” guilds mentioned. It’s not like CoH should have tried to allow Marvel names for any players who might have received permission to use a given trademarked name.
If “The Syndicate” wishes to allow the MMORPG to use the name then ok. But it would have to be without limitations. If “The Syndicate” wants to remove that name from use in MMORPG’s, I see no reason for MMORPG’s to let anyone use it, even The Syndicate itself.
So what does this mean for those Syndicate NPCs that I was killing in the Arathi Highlands last night?
I guess I’m just surprised that the name wasn’t already trademarked long ago well before the days of mmogs for a completely unrelated “business”. I guess I just don’t see where this is so much a business move as a “we’re taking our toys and going home” move (stick out tongue here).
In fact there are at least four registrations for the mark “The Syndicate” registered with the USPTO, but each in different business areas. This is permitted by US trademark law. The registration by the guild is specific to the business of Entertainment Services, with online gaming mentioned explicitly so does not conflict with the other filings.
Still. It is a “we’re taking our toys and going home” move.
Interestingly, World of Warcraft has a group of NPCs/mobs called The Syndicate. I wonder if Blizz is in trademark violation. 😛
News at Eleven: World of Warcraft shuts down in the face of lawsuit by a mysterious band of irate gamer-lawyers known only as… The Syndica– ulp!
Honestly per most EULAs I know using a trademarked name in game is a one way ticket to getting a name switch.
I fully encourage everyone to register Syndicate guild names in every game they play. If the Syndicate wants the trademark they better get used to people trying to register it before them… which in the end will lead to hopefully The Syndicate not being allowed to use their guild name.
Its no different than people trying to get Drizzt, Gandalf, etc in a game… they all get changed in the end.
Dumb move from an 3l33tist guild anyways.
I think no guild will be permitted to be called “The Syndicate” in any game i build from now on. Name rejection on the spot.
Suck on that.
Seems pretty clear from their website the trademark is to prevent copycat guilds besmirching their name in games they don’t play. And seem to only pertain to gaming guilds/entertainment groups. I remember a DOAC syndicate, bunch of twits.. Looks like it wasn’t even the real (now 10 year old) guild, although they claimed to be.. Good to know.
I play WoW now, the ingame faction has the same name, but in one of the quests in the battlegrounds they (or used to) talk about a hand/circle/eye thing.. (their other trademark) It could be in tribute or a (friendly?) jab at a big guild playing their game? pretty cool, IMO.
Why shouldn’t a big, well known and enduring group like that be able to register their name and artwork to prevent phonies? I don’t see a good reason why not. They have clearly put more effort into their group in 10 years then many companies put into their products. Not to mention that having a large stable userbase like that is exactly what MMORPGs should be reaching out for to solidify their subscription base.
I have to admit, I am a bit surprised by the largely negative reaction to this. Why give love to people getting IP rights in Second Life, and not to this?
Because it restricts instead of creating opportunities for creativity, the latter being what IP law should be about. If rights that people obtain for Second Life start to interfere with where MMORPG’s in general can go then I have a problem with that too (actually in general I am less impressed with Second Life than a lot of people seem to be so my stance here probably isn’t too surprising). I am a proponent of reducing the potency and scope of IP law in general — this is just a subcase. What The Syndicate is asking for here, with a trademark, seems to have too large of a scope and that name seems to be, in particular, too much of a restriction on guild naming. As this only seems like it would create headaches for everyone else in the MMORPG world I’m not sure why anyone else should respect it or help them enforce this. Far easier to just remove the name entirely from circulation.
Well, I suppose you could argue that forcing other guilds to not use as generic a word as “syndicate” might create some opportunities for creativity… 😛 (yes, I am being sarcastic here).
I agree that the interference with others is problematic, but I tend to see that as to some degree inherent in much of IP protection law. And in general, I agree with you that it’s overreaching, especially lately.
That said, what’s interesting here is a player creation creating its own independent legal standing, without even the say-so of the developers. The potential for this being precedent setting in areas other than a guild name is fascinating to me.
We firmly believe that trademarks don’t discourage creative enterprise, they nurture it by allowing the people engaged in those enterprises to protect their reputation and their investment. The Syndicate® trademarked our name and logo to insure that our efforts at developing The Syndicate® would be protected in the online gaming world. We do recognize this is a relatively new topic for the online gaming community, but it was done to address an issue common in the gaming world where aliases and identities are so easily assumed and discarded. Some examples of our motivation have already made it into this blog. Over the past few years we have dealt with individuals and guilds not only using our name but outright claiming to be us. This has happened a lot over the past 10 years and I am sure it has been an issue for some other old and/or well known groups.
Our marks’ application is described on the registry as “Entertainment services, namely, an online gaming guild providing in game opportunities for proliferating game expertise and camaraderie among gamers supported by a web site featuring multimedia materials.” We are proud of our involvement in a host of services that include, but are not limited to, our annual conference, submissions to game development books, articles we have written for gaming publications, guides for specific games or aspects of games, and a line of gaming related products and clothing. We are also developing a service for providing the development community feedback from gamers on what they really want. We even have a paid position on the advisor board for a small MMO company that we hope, one day, will result in a vibrant next generation gaming world that has a positive impact on the whole community.
The Syndicate® is not simply a collection of people playing MMO’s that share a title. We are an online gaming community that strives very hard to provide outstanding services and benefits for our members and also for the gaming community as a whole. We think our efforts are a positive contribution and encourage feedback. If anyone would like to discuss our trademark efforts with us in more detail, we can be reached at [email protected]
Pff. I’m part of an online gaming community that’s been around… oh, 7 or 8 years now. When we got around to WoW, some other guild had taken the name on one of the servers we landed on.
So WE PICKED ANOTHER FREAKING NAME. Good god, you’d think you mattered.
Personally, it sounds like the guild has an ego problem. Noone cares about you’re guild name. And if you’re gonna trademark your name, at least be a litte more unique. “The Syndicate”? I read the guilds website page on the trademark ( http://www.llts.org/trademark.htm ), they’re going after people with the word “syndicate” in their guild name?! You don’t OWN the word Syndicate! If I start a guild “Dark Syndicate” or “The Red Dragon Syndicate”, too bad. Pick a more unique name next time.
Interesting, EULA’s are about as binding as the disclaimers on the back of tickets for roller-coaster rides, virtual property rights? well property by definition creates a “class” of property holders….sometimes theyve been known to take “actions”…..the same could be said of trademarks as property which results in a class of property owners…
Restricting the owners of of a class from game play you say? well that could be spun as discriminatory?
Now Im not syaing this is good or bad, I am saying theres a big stick out there, the question is which gaming company is going to get hit with it first…..and its likely NOT going to feel good…..
Um so when Bullfrog sue this l33t guild for using the name Syndicate (I can actually recall the game – twas fun)can we clap? Syndicate came out in 1993 as I recall, and was an outstanding British game, I hope they make a lot of money sueing the l33t guild. *Sends off email to Bullfrog*
Reading the post from the guild was useful, a guild to never ever go anywhere near.
Now correct me if I am wrong but didnt most game companies put in their EULA’s that any and all content created inside their game including names was the property of said company? Now on top of that I beleive that trademarking the name in general is a bad move. The effort it would take to enforce it would be to great and with that would make most new games as well as old ones ban the name outright from the game. If this type of activity is widespread then as a poster above said names will be far and few between. We may even HAVE to use names that only developers give us. Unable to choose the name we want to because there is to many names trademarked and the developers are tired of getting emails about “some guild using another guilds name”.
Eventually this would lead to people trademarking mass names and creating a business out of it. Im also pretty sure that if another guild was to say use the name Syndicate then they could without any problem. Trademarking names alone can save your identity but will not protect the word from ever being used.
In the end I beleive that move is in bad taste. The only ones who can benefit is the guild yet in a few years they might not even be able to use their own name in games.
I would not be to worried for ourside the virtual world it would be trademarked, but inside the game all is owned by WOW by their TOS.
By excepting the TOS as stated “The Syndicate” has given up all rights to the name ingame. This means the name “The Syndicate” and all other little pixels in the game be it graphics or letters , names ect are the property of WOW while being transmitted from their servers.
Use of the name Syndicate or The Syndicate in any virtual world is open by the TOS of the game stateing all within the game itself is property of that games makers, if you do not agree you do not play.
I wouldnt however use the name for commercial reasons if trademarked outside of the game.
Any name should be available ingame by TOS unless taken. If the guild that trademarked the name has that name on all server fine but I dont think it would be against WOWs TOS to have that name on one of their servers taken by another gamer if not already taken.
All use of the Game Client is subject to this License Agreement and to the Terms of Use agreement, which you must accept before you can use your Account to play the Game through access to the Service. Licensor reserves the right to update, modify or change the Terms of Use at any time.
All use of the Game is governed by the terms of this End User License Agreement (“License Agreement” or “Agreement”). The Game may only be played by obtaining from Licensor access to the World of Warcraft massively multi-player on-line role-playing game service (the “Service”), which is subject to a separate Terms of Use agreement (the “Terms of Use”).
Now here is the ripper right out of wows terms of use agreement.
Rules related to user names:
In particular, you may not use any name:
5. That is, contains, or is substantially similar to a trademark or service mark, whether registered or not;
That means that the guild name “The Syndicate is against the WORLD OF WARCRAFT(R) TERMS OF USE AGREEMENT
Maybe you shouldnt have trademarked it if you wanted to play wow 🙂
Firstly, IANAL.
A few points that haven’t been mentioned yet:
1. The name servicemarked is “The Syndicate,” rather than just “Syndicate.” I don’t think I need to point out that this is because the USPTO generally throws out tradermarks/servicemarks on dictionary words.
2. Another party can file for cancellation of your mark if within the first five years of its registration.
3. Trademarks and Servicemarks only apply when commerce is involved:
Well I have been running The Syndicate Clan for the last 3 years now. We are a gaming community that started its life in Planetside.
We were approached by these chaps stating we were breaking the Trademark law and they would have us shut down in every game we played and also wanted our website name changed & URL.
As you can imagine we weren’t happy about this at all, we have never heard of these guys before and they had the cheek to try and close us down because of a name. There are many, many, many guilds either called “The Syndicate” or with “Syndicate” in their name, trust me these chaps really can’t do that much about it (esp if you aren’t based in the US)
After a few emails back and forth from their “lawyer” stating they would be taking action against us (this was 2 years ago) we contacted our “lawyer” and put him in contact with these guys…. We haven’t heard anything since, we haven’t been shut down in any of the games we play, and after contacting the makers of the games we partake in (SoE, CCP, Blizzard) not one of them said they would make us change our name.
So if there are any other groups out there with Syndicate in their name, or you are thinking of starting a gaming community/guild using “The Syndicate” I would say go for it, and don’t worry.
Dv8ed, I think the reason you haven’t run into issues was that they probably approached you before their mark was approved. You said it was some time ago and they only were officially approved in December of this part year. So in order for the International Trademark Agreement, known as the Madrid Protocol, to come into play they have to be officially registered. They are now so it would seem logical they will get back to you eventually. They seem to be taking the smarter road these days though and dealing directly with MMO companies. I know ours was approached and we are enforcing their mark as will those of several of my friends working for other companies. It is probably not the best use of costly legal resources to deal directly with guilds like you directly anymore. I would chalk up those talks to them being new to Trademarks way back then. They seem to be smarter about it these days.
Jenga…. So you can honestly say to me that with the amount of “Syndicate” clans/guilds out there, they are really going to bother enforcing this, cause that is going to be one HELL of A LOT of work on their behalf to get all these “Syndicate” guilds to stop using “thier” name, its used all over the world by many gaming communites, just do a google search.
And also nice to know that 2 years ago they were using bully tactics to try and get their way, stating that they already had it trademarked and would be taking us to court, when in fact they didnt have it trade marked at all. Nice to know what kind of low life pond scum we are dealing with. People that try and scare others into what they want.
Do they really have nothing better to do than ruin perfectly good gaming communities that have been running a very long time, cause these chaps think they are better than every one else, and want to stop others using a name!
I could understand it, if we were a commercial venture, being sponsered as these guys are (which we arent). We are a private group of friends playing games under our own banner of “Syndicate” There should be nothing wrong in that.
Dv, I don’t know that I have a good answer for you except to say that at least in so far as the name “The Syndicate” goes, our corporate lawyers reviewed the law and decided that other guilds using it within our gaming world will be renamed. We actually added the combination of words, and common mispellings of them, to our filters that regulate guild name creation. As I mentioned in my other post, I know some of my friends in other companies have taken similar steps since we all kind of put our heads together to find an easy way to enforce their, and future, mark that didn’t cost us alot of time and money.
I can’t tell you specifically why they approached you back whenever they did but in my limited reading about Trademark Law I did read that you can claim ownership of a mark before its formally registered if you are actively using it and you can use the little TM symbol in that case. You can only use that circle R symbol once it is registered and at that point you have even stronger legal claim to it. It doesn’t sound to me so much like bully tactics as it does attempted enforcement of their mark but I guess that depends on one’s perspective.
Since you said your date of first use of the name was only three years ago and theirs is ten years ago I think they pretty much trump any legal claim you would have. I know they do trump it in so far as our company and several others are concerned. Maybe you should engage them in conversation again and perhaps they will grant you an exception to use their mark, if such a thing is possible under the law. The best I can tell you is that should you use that name in certain gaming worlds, it will end up renamed or blocked from being created to begin with. You may not like that but at least some MMO companies are taking that stance since their trademark is gaming specific. As I said, our corporate lawyers reviewed although it is certainly an unprecidented situation for the gaming world, we and others have ruled that it needed to be enforced. So if they don’t give you an exception you may wish to consider an alternative name should you run across one of the game companies that won’t allow it to be used. It is my personal opinion that the list of companies is already decently long and will only grow with time as more guilds protect their names over time. And since we have found a very low cost way to enforce it by adding it to the filters we use to regulate profanity and other banned words in our guild names, it takes very little time, effort and therefore money on our part and it protects us from dealing with any legal issues.
Avoiding the Trademark Pitfalls of a Start-Up Company by Robert E. Richards, Kilpatrick Stockton LLP, Atlanta Office
Basics of Trademark & Copyright Law by Christopher A. Sloan, Boult, Cummings, Conners & Berry, PLC, Nashville Office