Trademark filings in the metaverse and non-fungible token (NFT) space are a hot topic these days in the media and IP Bar, and many brand owners are wondering if it’s time to join. them or risk being left behind. As more consumers turn to online activities during the pandemic and technology continues to advance – enabling more online collaboration and engagement in virtual reality hangouts – the question of whether and how a company can positively protect its brands in the virtual market is a good question. .
As the concepts of metaverse and NFT are often confused or misunderstood, it is important to distinguish between the two concepts.
Non-fungible tokens (NFT)
NFTs are unique digital assets that are stored on a blockchain (a blockchain is a digital record of information shared through a decentralized network). NFTs are often associated with things like digital images, photos, videos, or audio. While many types of digital files can be easily copied and reproduced without any version of the file being identified as “the original”, the owner of an NFT owns a unique asset whose authenticity is validated in the blockchain. . The first NFT was created in 2014and popularity and demand grew steadily over the following years before expanding rapidly in 2021. While NFTs were once the domain of fairly specialized online communities and artists, brands such as Coca-Cola, McDonald’s , the NFL and Gucci have since jumped on the train.
The term “metaverse” has been around for longer, but has also seen an explosion of interest over the past year, most notably with Facebook’s pivot to branding META (a reference to the metaverse) in 2021. , the term identifies a virtual world. or a network of virtual worlds enabling online social connection. The metaverse received a lot of attention in the early 2000s with the creation of virtual worlds such as Second Life as well as the advent of massively multiplayer online role-playing games (MMORPGs), and some brands embraced the metaverse. For example, in 2007, Coca-Cola held a competition to create a COKE® drink vending machine to place in the virtual world of Second Life. At the time, these companies were criticized by some as a wasteful experiment given the small number of participating consumers. However, the metaverse has grown steadily since then, and brand interest has increased in 2021 and 2022. In recent months, particular attention has been paid to the launch of brands such as JP Morgan and Samsung in virtual worlds, and the acquisition of existing digital asset startups by larger companies such as Nike.
Key Considerations When Deciding Whether to File for Extended Protection for Virtual Goods and Services
When deciding whether to move forward with new filings to protect a trademark with virtual goods and services, we recommend that you first consider your budget and current trademark coverage. If you haven’t yet fully protected your core brands with the goods and services you already sell in all jurisdictions where you sell or plan to expand, this might be a higher priority than committing funds to the space. virtual.
Next, consider what your business is, how your brands interact with audiences, and how they might fit into NFT and/or metaverse spaces. Do you foresee any marketing opportunities? Would you be upset if someone else tried to use your brand in these spaces? If your business does a lot of advertising and sells goods or services to the general public, it’s not too hard to imagine that your marketing team will eventually want to seek sales or advertising opportunities in new virtual markets. Your sales team may also be interested, as recent McDonald’s trademark applications demonstrate that the company can offer delivery of real goods ordered from virtual world markets. On the other hand, if you are, for example, a raw materials manufacturer, or in a niche market, or if you are not a brand that general consumers easily recognize, focus on protecting virtual applications may be less important.
Ultimately, a new app to add coverage for offering virtual goods and services isn’t too expensive and will likely be less expensive than taking enforcement action without an app, so if you have any idea that this space could be important, filing an application is a good idea. However, U.S. businesses filing domestically will need to have a legitimate intent to eventually use the mark with the goods and services for which they are applying and a likelihood of active use within the next 3-4 years for the application to end up being perfected. In the meantime, defensive filings still have legal value, even if you ultimately fail to demonstrate use within the time limit and/or simply decide not to sue NFTs or Metaverse Goods and Services after all. Additionally, smart marketing teams may be able to generate some publicity value by making the deposits or advertising participation in these spaces, as we have seen in recent media coverage.
If you decide to pursue protection, another thing to discuss with your marketing and branding teams is whether you would use your usual branding or modify it for virtual spaces. For example, Panera Bread recently applied for the PANERAVERSE brand for virtual food and drink products for use in virtual restaurants and cafes. Interestingly, the app also included the use of PANERAVERSE with NFTs “to facilitate business transactions”, indicating that it may consider allowing payments in its virtual global space via NFTs.