To the Metaverse and Beyond – Considerations for Trademark Holders

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There is no doubt that the word “metaverse” is appearing more and more frequently, but what does the emergence of the metaverse and the proliferation of virtual reality platforms mean for brand owners? We are considering whether it is time to rethink deposit and execution strategies.

The metaverse is a virtual reality construct where there is an overlap between reality and the online 3D virtual environment. The metaverse is accessible through computers, smart devices, and AR/VR technologies. Currently, Meta Platforms Inc. (formerly Facebook Inc.) is pushing the build with plans to develop metaverse experiences, services and hardware so that the ordinary person can enter the metaverse to work, shop, socialize, play games – the scope and application are somewhat limitless.

What does the metaverse mean for trademark holders?

Should all trademark owners consider expanding their trademark filings to include virtual downloadable goods, secure rights, and metaverse presence?

Nike Inc. recently filed a series of new trademark applications in the United States for some of its best-known marks, including NIKE, Just Do It and the AIR JORDAN logo, covering various Class 9 and Class 42 goods and services, including understood downloadable virtual goods in class 9 and retail store services featuring virtual goods. in Class 42. Nike Inc.’s plans for these new brands are still unclear. What these filings indicate is that Nike Inc. may be preparing to enter the metaverse, perhaps by offering a virtual reality shopping experience. Or apps can be a defensive strategy to stop infringing use with the hope that its marks might appear, without consent, in the metaverse or be used on non-fungible tokens (NFTs).

The Metaverse creates virtual environments that mimic the real world where participants can handle, wear and touch branded products. In this context, would the use of a trademark infringe the rights of the trademark holder for these equivalent products in the real world? In other words, does the proprietor of the mark have to request separately downloadable virtual goods if he already owns these goods or services in the appropriate class in reality?

The issue has yet to be tested in court, but in practice one would expect a similar process and reasoning to apply to those currently used for online infringements.

Metaverse Scenario to Consider

Person X creates a metaverse dating experience, and users can purchase clothes as NFTs to wear to their virtual date. Some of the NFT items for purchase are luxury branded clothing (all trademarks of third parties). Does the promotion and sale of these NFTs infringe on the brands that appear on the garments? If we compare it to online retail sales, the answer is probably yes. On the other hand, software or downloadable software (which presumably includes downloadable virtual goods) are generally not considered products of a description similar to clothing, for example. This suggests that it would be much safer and prudent for brand owners to consider expanding their repositories to include downloadable virtual goods and/or services.

Presumably, this would be of interest to high profile brands globally, assuming existing portfolios don’t already provide some coverage.

For most of us, the Metaverse is still an enigma and its adoption and popularity are unknown, but there certainly seems to be momentum. For brand owners (especially those in the well-known consumer goods market), there may be valid reason to consider securing brands in this space to get a foot in the door, and also potentially as a defensive strategy. to combat counterfeiters, especially in jurisdictions where trademark squatting is prevalent and filing early is important – see Trademark and Trademark Protection in China.

For now, we will continue to monitor this space, however, just like when the internet was first launched and its capabilities and uses were yet to be fully explored, there is certainly potential for the metaverse and its uses are becoming the new norm.

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