PROTECTING YOUR BRAND IN THE METAVERSE
Should you file for metaverse trademark registrations? Filing trademark registrations for marks in the metaverse is the best protection for brands. The USPTO has included these types of goods and services in its trademark identification manual for ten years. Examples:
Class 35: “Retail store services featuring virtual goods, namely, {specify type,
e.g. clothing} for use in online virtual worlds”
Class 9: “Downloadable virtual goods, namely, computer programs featuring
{specify nature, type, e.g. articles of clothing} for use in online virtual worlds”
Class 42: “Computer programming services, namely, content creation for virtual worlds and three dimensional platforms”
Class 42 : “Programming virtual {indicate type, e.g., articles of clothing, food} for use in online virtual worlds”
SHOULD YOU FILE FOR NFT TRADEMARK REGISTRATIONS? Another option for brand owners to protect their marks is to sell their virtual goods as NFTs. As of March 30, 2022, over 3,000 records in the U.S. Patent and Trademark Office database contain the word NFT. Famous brands such as BURGER KING, CVS, J.CREW and WALMART all have filed NFT trademark registrations. Examples:
Class 9: Downloadable music files authenticated by NFTs
Class 9: Downloadable multimedia files containing artwork relating to
{indicate field or subject matter of file} authenticated by NFTs
Class 9: Downloadable video recordings featuring {specify subject matter, e.g., sports highlights, movie clips, memes, etc.} authenticated by NFTs
Class 9: Downloadable multimedia files containing artwork, text, audio and video relating to {indicate field or subject matter of file} authenticated by NFTs.
Should you file for NFT domain names? Blockchain domain names are new web extensions such as “.crypto” or “.eth.” Right now, most crypto wallets are identified by a long series of numbers and letters (just like websites were before domain names). If you purchase a blockchain domain name, you can use the blockchain domain name to identify your crypto wallet.
Enforcing your IP rights: Trademarks and the Metaverse – Using IRL or “in real life” trademark law to extend brands’ rights in the metaverse has not yet been tested.
TRADEMARKS AND NFTS
Trademarks and Fair Use – Because NFTs are often considered art, the first line of defense to a trademark infringement claim for an NFT creator will be fair use. Below is a summary of general trademark fair use cases in the United States.
TRADEMARK LICENSING IN THE METAVERSE
Types of License Agreements in the Metaverse
Smart Contract / NFT Terms – NFT license agreements are created to protect the NFTs creator’s rights.
TYPES OF NFT LICENSE AGREEMENTS
- Only Allows Personal and Non-Commercial Use – This is the typical NFT license agreement which allows the owners to use the NFT for personal, non-commercial use. However, no other rights are granted.
- Allows Personal Commercial Use – This type of NFT license agreement allows the owners to use the NFT for commercial use. However, as soon as the owner sells the NFT, the owner will lose these rights.
Hybrid Model – This type of license allows personal and a limited commercial use.