FAZE Apparel sues esports org FaZe Clan over trademark infringement

FaZe Clan's logo shines brightly on stage at the ELeague Premier. Provided by ELeague

San Francisco-based clothing company FAZE Apparel is suing FaZe Clan over alleged trademark infringement for the use of the word "Faze" on apparel items sold by the esports team, according to documents filed in the U.S. District Court for the Central District of California.

On May 22, district judge R. Gary Klausner granted a motion for a preliminary injunction sought by FAZE Apparel that will prohibit FaZe Clan from selling merchandise with the word "Faze" on it, without "Clan" being prominently displayed thereafter, until the dispute between the parties is resolved. The litigation between FAZE Apparel and FaZe Clan is pending. FAZE Apparel and FaZe Clan did not respond to requests for comment.

The lawsuit stems from a trademark of the word "Faze" that was intended to be used on several clothing items -- such as various shirts and hats -- filed by FAZE Apparel in March 2013 and approved by the U.S. Patent and Trademark Office in June 2014.

FAZE Apparel is seeking treble damages, attorney fees and enhanced statutory counterfeiting damages up to $2 million per counterfeit mark, according to the documents. It also wishes for the court to uphold its trademarks.

In May 2013, FaZe Clan registered for several trademarks -- "FaZe" and "FaZe Clan Sniping With" -- for use on clothing, with the U.S. Patent and Trademark Office refusing both as a result of potential confusion with FAZE Apparel's registered trademarks. FaZe Clan in July 2013 then applied for the trademark "FaZe Clan" for use in videos, video games and apparel, with the apparel part being contested again by the U.S. Patent and Trademark Office, but later approved in Sep. 2015.

FAZE Apparel filed an opposition for that trademark shortly thereafter with the Trademark Trial and Appeal Board, according to the suit, objecting to the "FaZe Clan" mark's use on clothing. FaZe Clan failed to respond to the opposition, FAZE Apparel claims, and in Jan. 2016, the Trademark Trial and Appeal Board ruled in favor of FAZE Apparel.

A number of cease-and-desist letters were issued by FAZE Apparel to FaZe Clan in 2014 and 2016 -- with FaZe Clan even changing its clothing brand to the "RED MILITIA" after the initial cease-and-desist letter in 2014. However, in Feb. 2017, FaZe Clan approached FAZE Apparel to work a licensing deal for use of the mark -- but neither party came to an agreement.

The most recent dispute occurred in December, which led to the lawsuit being filed in San Francisco in January and later transferred to Los Angeles in March. In December, FaZe Clan again began selling merchandise with the word "Faze" on it, which FAZE Apparel claims is a violation of their mark.

"FaZe Clan's willful copying of the FAZE Marks is already producing consumer confusion," FAZE Apparel's lawyers at San Francisco-based firm Braunhagey & Borden alleged in the suit. "In the last several weeks alone, multiple customers have contacted FAZE Apparel to complain about FaZe Clan's merchandise or customer service. For instance, earlier [in January], a consumer called the FAZE Apparel store to complain about FaZe Clan's failure to promptly ship a sweatshirt that she ordered. Another customer contacted FAZE Apparel [in December] to ask why his FaZe Clan discount code wasn't working -- on FAZE Apparel's website."

In its defense in the suit filed in April, FaZe Clan admitted that FAZE Apparel has asserted its rights against the esports organization, but denied allegations that FAZE Apparel had "superior rights," that FaZe Clan has acknowledged any such rights and that its clothing items with "Faze" on them infringe on FAZE Apparel's trademarks.

In its counterclaim, FaZe Clan seeks that the lawsuit be filed in its favor, that the court ordered the director of the U.S. Patent and Trademark Office to cancel all trademark registrations obtained by FAZE Apparel and to reward FaZe Clan with attorney fees, costs, expenses and interest.

FAZE Apparel was founded in 2007 and has sold merchandise both online and in several stores across the world since then.

FaZe Clan was founded in 2010 and has since become one of the most popular teams in esports -- notably in Call of Duty and Counter-Strike: Global Offensive, where it has won several championships, and on YouTube, where it houses a number of content creators in its network.