Are we (virtually) there yet? Waiting for the rise of the metaverse from a brand owner’s perspective
We are now almost one year on from Mark Zuckerberg’s much talked-about October 2021 letter announcing, among other things, the change of the name of his company from Facebook to Meta, reflecting the company’s commitment to revolutionising social connection through virtual reality.
Zuckerberg’s expansive vision of a metaverse currently remains more of a fantasy than a (virtual) reality: we are still not at the stage where participants can enter a single online location and participate in an immersive, multi-faceted virtual world that bears any meaningful resemblance to the ‘real world’.
Protecting brands in the virtual world
This has not stopped many companies seeking to get on the front foot when it comes to protecting their trade mark rights in the metaverse, and nor should it. Brand owners know that their best defence is to be ahead of market trends in terms of their brand and trade mark protection.
Nike was one of the first out of the blocks, filing a spate of new applications with the United States Patent and Trademark Office at, probably not coincidentally, the exact same time as Zuckerberg’s announcement. The applications cover things like downloadable virtual goods for use in virtual worlds, retail stores featuring virtual goods for use online, and providing non-downloadable virtual goods for use in virtual environments.
Countless other consumer brands including Ford, Sony, Formula 1 and even Miley Cyrus have followed suit in the past year (for those attempting to keep count, the Twitter account of trade mark attorney Mike Kondoudis keeps a close watch on the USPTO statistics, calculating over 3,700 metaverse-related goods and service filings in the first seven months of 2022 alone).
The majority of filings are by businesses who are not currently active in the metaverse, and who may simply be taking pre-emptive steps (as any strong brand owner should), either to keep their options open, or alternatively to guard against unaffiliated third parties seeking to opportunistically register the same or similar trade marks in respect of virtual goods and services for themselves.
Global IP Offices considering scope of ‘virtual’ goods against rights relevant to goods from ‘real life’
In addition to proactively protecting one’s trade marks for virtual uses, recently two USPTO office actions dealt with broad filings covering what are essentially ‘virtual’ versions of the same goods and services that are already offered under these trade marks in the ‘real world’. Trade mark applications by unaffiliated third parties for GUCCI and PRADA covering downloadable virtual clothing and footwear, retail store services for these virtual goods, and entertainment services for providing non-downloadable virtual goods, received office actions citing existing registrations covering the same or similar goods or services for the ‘real world’.
The fact that neither brand had existing registrations specifically extending to the metaverse or virtual goods or services did not preclude objections on the basis that consumers would mistakenly assume a connection between the trade marks as used in the virtual space and the existing real world brands. It remains to be seen whether the same objections would be raised in respect of less well-known brands, including whether cross-class searching in all IP Offices is sufficiently sophisticated to identify this type of potential confusion, so brands should not rely on their ‘real world’ registered protection alone.
Virtual enforcement often requires both offensive and defensive measures
Of course, enforcement of one’s trade mark rights in the metaverse is another battle entirely, as Hermès knows all too well. Against the backdrop of an ongoing battle with artist Mason Rothschild over trade mark rights in the metaverse, Hermès has also gone on the offensive.
It recently filed trade mark applications in the US to register its name as well as the names of two of its most iconic handbags – the Birkin and the Kelly – in respect of a wide range of goods and services associated with the metaverse (again, on the basis of an intent-to-use, rather than any actual current use). Interestingly, the HERMÈS application covers services relating to virtual currency for use in connection with virtual goods including digital collectibles and NFTs in class 36, and the authentication, issuance and validation of digital certificates and other user authentication-related services in class 42.This could indicate an intention by Hermès to use new technologies to assist in authentication and tracking of its ‘real world’ products.
Where to (virtually) from here?
According to a recent McKinsey report, the metaverse could represent $ 5 trillion in value by 2030, and brands are clamouring to make sure they are well-positioned to cash in on their slice of the pie. For brand owners, this means having the following steps as part of your trade mark strategy:
- Think about your potential virtual opportunities, as these will evolve over time, and get on the front foot by making sure your trade mark protection covers both real and virtual uses.
- Proactively ensure third parties don’t erode your rights or opportunities in the virtual world through use OR registration of the same or similar brands and trade marks, including potentially by expanding the scope of your trade mark and marketplace monitoring to cover additional goods and services, or virtual uses.
- Don’t forget about the value of self-authentication online to protect your brand, and therefore your virtual reputation.