EUIPO provides guidance on Metaverse, NFT-focused brands
Brands ranging from Louis Vuitton, Gucci and Valentino to Nike and adidas have made headlines in the last year after submitting applications for registration for the use of their well-known brands in the virtual world, whether they reflect existing use or seem to indicate their intention to to use such marks. in the metaverse or in connection with non-fungible tokens (“NFTs”). Not limited to fashion and luxury names, brands across industries (think: KFC to the City of Beverly Hills) have followed the lead set by Nike last year, rushing to brand offices around the world to submit applications with the intention of use – often in an attempt to protect their valuables in the face of a lack of security about how courts will look at their existing rights (and registrations in the real world) and how trademark offices will handle applications that point to web3 technologies.
Given the growing volume of trademark applications that contain terms “related to virtual goods and non-fungible tokens” that it has received in recent months, the European Union Intellectual Property Office (“EUIPO”) has provided some initial guidance on the approach it takes for classification purposes. . (Trademark applications – and registrations – classify marks according to use in specific classes of goods / services, and to date most marks have submitted applications showing use or intended use in class 9 for “downloadable virtual goods including NFTs,” class 35 for “retail stores for virtual goods” and / or Class 41 for “entertainment services in virtual environments”.)
Focusing exclusively on Class 9 (and not mentioning Class 35 or 41), EUIPO states in its recent release that “virtual goods are appropriate for Class 9 because they are treated as digital content or images.” However, the trade mark body claims that ‘the concept virtual goods in itself lacks clarity and precision, so must be further specified by specifying the content to which the virtual goods relate (e.g. downloadable virtual goods, namely virtual clothes). » EUIPO notes that the 12th edition of the Nice Classification, which enters into force on 1 January 2023, will include “the term downloadable digital files authenticated by non-fungible tokens in class 9. “
With regard to NFTs, in particular, EUIPO defines the relatively new technology, claiming that NFTs are “treated as unique digital certificates registered in a blockchain, which authenticate digital objects, but are different from the digital objects. For the office is the term non-fungible tokens in itself is not acceptable. “(EUIPO Highlight.) As such,” The type of digital element authenticated by NFT must be specified. ” the established principles of classification for services. “
The brief guidance from EUIPO – which notes that its approach is set out in the 2023 draft guidelines that a number of stakeholders have until 3 October to comment on – follows quickly from responses from the US Patent and Trademark Office (“USPTO”) to a number meta-focused applications from Nike, which provide indications of how it will handle similar applications in the future. On the heels of Nike submitting a handful of trademark applications to the USPTO for the name, Swoosh logo, “JUST DO IT” and Jordan marks for use on “downloadable virtual goods” (Class 9), “in-store virtual goods” goods ” (Class 35), and “entertainment services, namely, providing online, non-downloadable virtual footwear, clothing, headgear, spectacles, bags, sports bags, backpacks, sports equipment, art, toys and accessories for virtual use environments” (Class 41), provided USPTO’s first feedback last month.
In the recently issued Office documents, a USPTO investigative attorney provided some helpful information on how the Trademark Office will handle the identification of the virtual goods and / or services by stating that she found Nike’s descriptions to be “indeterminate” and “unclear.” With this in mind, the investigating lawyer urged Nike to replace “clarifying wording with bold, if accurate” …
Class 9: Downloadable virtual goods, namely computer programs with footwear, clothing, headgear, glasses, bags, sports bags, backpacks, sports equipment, art, toys and accessories for online use in virtual worlds online.
Class 35: Retail services of virtual goods, namely footwear, clothing, headgear, sports bags for spectacles, backpacks, sports equipment, art, toys and accessories for online use in virtual worlds online; online store services with virtual goods, namely footwear, clothing, headgear, glasses, bags, sports bags, backpacks, sports equipment, art, toys and accessories for use online in virtual worlds online.
Class 41: Entertainment services, namely the provision of online, non-downloadable virtual footwear, clothing, headgear, spectacles, bags, sports bags, backpacks, sports equipment, art, toys and accessories for use in virtual environments made for entertainment purposes.
Office actions are the first significant development since Nike submitted its applications for metaverse trademarks last year – and are some of the first examples of USPTO providing feedback on metaverse-focused applications. Given the early development of Nike and its applications (as well as applications submitted by Yuga Labs, the company behind the Bored Ape Yacht Club collection of NFTs, and those from the Nike-owned digital fashion and footwear brand RTFKT), any feedback from the USPTO as answers probably inform how other applications will be viewed by the trademark office and will serve as a blueprint for other parties who wish to submit their own applications for the use of their trademarks in the metaverse.
