Musical brand

Brand protection for virtual goods and services in the metaverse

Last year, the tech giant formerly known as “Facebook” renamed itself “Meta” and announced plans to create a virtual society known as “Metaverse.” The Metaverse will almost certainly provide an e-commerce experience that can only be found in a three-dimensional digital world. The metaverse hasn’t arrived yet, but many businesses are gearing up to take advantage of e-commerce market opportunities in the new virtual world.

Digital assets

While there is a lot of excitement and skepticism surrounding existing digital assets, like cryptocurrencies and non-fungible tokens (“NFTs”), many individuals and businesses are stepping up their efforts to market and supply goods and virtual services in the metaverse. This is evidenced by the growing number of new applications submitted to the United States Patent and Trademark Office (“USPTO”) seeking to register trademarks for use of their mark in virtual reality.

These applicants come from a wide variety of industries, and while some brand owners may have decades-old trademark rights in the “real world”, they flock to obtain corresponding rights to the virtual goods and services that they intend to offer in the metaverse. Filing separate applications for existing trademarks that cover distinct virtual goods and services will assure trademark owners that those rights are recognized in a virtual marketplace like the Metaverse.

Just last week, McDonalds filed multiple trademark applications for “MCDONALDS” covering, among other goods and services, the operation of a virtual restaurant offering real and virtual goods. Additionally, McDonalds seeks registration of its trademark “MCCAFE” in connection with entertainment services such as live and virtual online concerts.

Metaverse Trademark Requests

Although McDonalds is one of the most recent major companies to file trademark applications seeking to protect its mark in the metaverse, it’s not the first – and likely won’t be the last. Other well-known brands that have filed claims covering virtual or digital goods and services are:

  • Panera Bread – application for PANERAVERSE, covering its virtual food and drink products for use in virtual worlds and other retail store services featuring virtual goods;

  • Nike – apps for NIKE, JUST DO IT, JORDAN, AIR JORDAN, Nike swoosh logo design mark, Jordan silhouette logo and their combinations, covering various virtual goods and services;

  • The Brooklyn Nets – apps for NETAVERSE, covering broadcast entertainment services and NBA team apparel;

  • Walmart – applications for WALMART, covering the creation and sale of virtual goods such as electronics, toys, decorations, sporting goods and personal care products;

  • Crocs – application for CROCS, covering footwear, apparel and accessories, and entertainment services in virtual environments;

  • Skechers – applications for SKECHERS, covering footwear, clothing and backpacks for use in online virtual worlds;

  • Jay-Z – app for JAY-Z, covering music, clothing, and jewelry for use in online virtual worlds; and

  • The Coachella Music Festival, app for COACHELLA, covering downloadable audio and video recordings featuring live music performances authenticated by NFTs.

Protection of virtual goods and services

The owners of the applications filed above cover a variety of industries and, importantly, are not limited to companies that currently offer purely digital goods and services. Given the surge in trademark applications to the USPTO for virtual goods and services since the announcement of the Metaverse, it’s clear that many are eyeing the creation of a new online virtual reality marketplace inherent in the Metaverse.

While the Metaverse is digital and will take place in virtual reality, its creation undoubtedly impacts real-world trademark rights.

©2022 Norris McLaughlin PA, All Rights ReservedNational Law Review, Volume XII, Number 42