Due to the sheer volume of recent media coverage, readers of this blog are likely familiar with the “metaverse,” or the idea of a virtual world where users can interact with an immersive computer-generated environment, objects, and other users. But why does anyone care about trademarks in the metaverse? Put simply, trademarks are almost certain to insert themselves in several scenarios in these immersive environments that are designed to be an extension or replica of the real world, such as:
- Creation of virtual shops to buy branded “virtual” goods;
- Branded virtual services, such as fitness classes, concerts, performances, or sporting events;
- Product placement, such as virtual characters wearing branded virtual goods or display of virtual advertisements within the metaverse; and
- Real and virtual combination marketing, where buying a real-world product allows the user to obtain a copy of the product in the virtual world as well for use in the metaverse.
To this end, the USPTO has seen a significant increase in trademark filings in connection with “virtual” goods and services. The increase in filings is likely because brand owners are uncertain if their existing trademark rights in physical goods will extend to and provide adequate protection for use of their trademarks on virtual goods. Although a full discussion on the merits of each position is beyond the scope of this blog, the prevailing position among trademark scholars appears to be that trademark rights in real world goods likely extend to their replicas in the digital world ‒ but this position is far from certain at the current juncture.
Regardless of the merits of either position, there is a more important, immediate question on the minds of brand owners: should I file applications to protect my brands for goods and services in the virtual world? A quick look at the U.S. trademark register reveals that many major companies have already answered that question in the affirmative and have applied to register their marks in connection with virtual goods and services. For example, current pending applications at the USPTO cover “downloadable virtual goods, namely, computer programs featuring footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys and accessories for use online and in online virtual worlds” in Class 9 and “Entertainment services, namely, providing on-line, non-downloadable virtual clothing” in Class 41, among others. Thus, many trademark owners are not waiting for an answer from courts or Congress but are taking affirmative steps on their own.
The key consideration driving many of these filings is that trademark registrations are granted in connection with the goods and services being provided, and those goods and services are divided between forty-five (45) classes at the USPTO. For example, handbags most often fall in Class 18, clothing items generally fall in Class 25, and retail services typically fall in Class 35. On the other hand, computer software generally falls into Class 9 or 42. Thus, while an application for “footwear” would be filed in Class 25, an application for its virtual counterpart would be filed in Class 9 or 42. Although the classification of goods and services is not a deciding factor in a trademark confusion analysis, it is often a consideration in trademark monitoring and enforcement efforts. For example, brand owners will often allow similar (or even identical) brands to “co-exist” with their own brands, so long as the goods and services offered under the trademarks are sufficiently distinct and offered in different channels of trade. Thus, a company that offers bread under a mark likely will not care if the identical mark is used by …….