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EUIPO provides guidance on metaverse, NFT-focused brands

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Brands ranging from Louis Vuitton, Gucci and Valentino to Nike and adidas have made headlines over the past year after filing registration applications for the use of their famous marks in the virtual world, reflecting the existing use or apparently indicating their intention to use these marks. in the metaverse or in connection with non-fungible tokens (“NFTs”). Not limited to fashion and luxury names, brands across all industries (think: KFC to the city of Beverly Hills) followed Nike’s lead last year and rushed into brand offices around the world to file intent-to-use claims – often in an effort to protect their valuable assets in light of a lack of certainty as to how courts will view their existing rights (and records) in the “ real world” and how trademark offices will deal with applications that point to web3 technologies.

Given the growing number of trademark applications containing terms “relating to virtual goods and non-fungible tokens” it has received in recent months, the European Union Intellectual Property Office (” EUIPO”) has provided some initial guidance as to the approach it takes for classification purposes. (Trademark applications – and registrations – classify marks according to their use in specific classes of goods/services, and to date most marks have filed applications which list the use or intended use in Class 9 for “downloadable virtual goods, including NFT”, Class 35 for “retail stores of virtual goods” and/or Class 41 for “entertainment services in virtual environments”).

Focusing exclusively on Class 9 (and making no mention of Class 35 or 41), the EUIPO states in its recent statement that “virtual goods fall under Class 9 because they are treated as digital content or images” . However, the trademark body claims that “the term virtual goods on its own lacks clarity and precision and must therefore be specified by indicating the content to which the virtual goods relate (for example downloadable virtual goods, namely, virtual clothing.).” The EUIPO notes that the 12th edition of the Nice Classification, which will come into force on January 1, 2023, will incorporate “the term downloadable digital files authenticated by non-fungible tokens in class 9.

With regard to NFTs, in particular, the EUIPO establishes a definition of the relatively new technology, stating that NFTs are “treated as unique digital certificates stored in a blockchain, which authenticate digital items, but distinct from those digital items. For the Office, the term non-fungible tokens in itself is not acceptable. (Emphasis added by EUIPO.) As such, “the type of digital item authenticated by the NFT must be specified”. Yet, the EUIPO states that “services related to virtual goods and NFTs will be classified in accordance with established service classification principles”.

EUIPO’s brief guidance – which notes that its approach is set out in the 2023 draft guidelines on which a range of stakeholders have until October 3 to comment – comes quickly on the heels of the Office’s responses. Patents and Trademarks (“USPTO”) to a number of Nike’s metaverse-focused applications, which provide guidance on how it will treat similar applications in the future. On the heels of Nike filing a handful of trademark applications with the USPTO for its name, the Swoosh logo, “JUST DO IT” and the Jordan marks for use on “downloadable virtual goods” (in Class 9 ), “retail store services featuring goods” (Class 35) and “entertainment services, namely the online provision of footwear, clothing, headgear, eyewear, bags, sports bags, backpacks, virtual non-downloadable sports objects, works of art, toys and props for use in environments” (Class 41), the USPTO issued its first comments last month.

In the newly issued Office actions, a USPTO examining attorney provided helpful insight into how the trademark office will handle the identification of virtual goods and/or services by stating that she considers Nike’s descriptions were “undefined” and “unclear.” With that in mind, the reviewing attorney encouraged Nike to replace the “bold clarifying wording, if accurate”…

Class 9: Downloadable virtual goods, namely, computer programs featuring shoes, clothing, headwear, eyewear, bags, gym bags, backpacks, athletic equipment, artwork, toys and accessories to use online in online virtual worlds.

Class 35: Retail store services featuring virtual goods, namely, footwear, clothing, headgear, eyewear, sports bags, backpacks, sports equipment, art, toys and accessories for use online in online virtual worlds; online retail store services featuring virtual merchandise, namely, footwear, clothing, headgear, eyewear, bags, sports bags, backpacks, sports equipment, sports, works of art, toys and accessories. for online use in online virtual worlds.

Class 41: Entertainment services, namely, providing online non-downloadable virtual footwear, clothing, headwear, eyewear, bags, gym bags, backpacks, sports equipment, artwork, toys and paraphernalia for use in virtual environments created for entertainment purposes.

The Office’s actions are the first substantial development since Nike filed its metaverse trademark applications last year – and are some of the first examples of the USPTO providing feedback to applications focused on the metaverse. Given the early nature of Nike and its apps (as well as apps filed by Yuga Labs, the company behind the NFT Bored Ape Yacht Club collection, and those of digital fashion and footwear brand RTFKT owned by Nike), any comments from the USPTO in response will likely inform how other applications will be considered by the trademark office and serve as a model for other parties seeking to file their own applications for use of their marks in the metaverse.