The U.S. Trademark and Patent Office (USPTO) has experienced a significant rise in the number of trademark applications to protect goods and/or services in a virtual sphere. These primarily include applications related to non-fungible tokens (NFTs) and in relation to virtual goods and services available in what is now being referred to as “the metaverse.”
In the past two decades, the dramatic rise in e-commerce saw brand owners scrambling to protect their assets in cyberspace, beginning with domain names, and then social media handles. Now, with the growth of interconnectivity plus digital experience creating virtual reality and augmented reality, technology experts and marketers refer to these new spheres of human interaction as the metaverse. This new market offers – and will likely expand upon – new ways for various industries to increase scalability, including new business opportunities and new ways to promote products and services at an even faster pace.
Interoperability is an essential feature of this latest development in the digital economy; consumers have the ability to move virtual items such as clothes or cars from one platform to another. In the real world, a consumer can buy a sports team jersey at the mall or online and then wear it to a sporting event, restaurant, or home. An outfit could be purchased and worn by an avatar on more than one platform in the virtual landscape. Purchases of virtual goods and services could be used in numerous virtual worlds.
- In light of such new scenarios, brand owners must consider intellectual property (IP) strategies for leveraging business models and innovation. Protectable IP assets in the metaverse range from copyrighted content to all manner of trademarks, including logos, brands, slogans, and trade dress in the form of packaging and design, and possibly even design patent protection for unique configurations. Companies should conduct a thorough analysis of the virtual landscape where they hope to market and promote goods and services to determine whether they even want to do business in the metaverse.
A New Frontier?
Globalization and collateral global market developments in all spheres, such as the evolution of banking systems and payments, will continue to challenge well-established legal precedents. Changes in intellectual property law are inevitable due to the new virtual landscape. Many legal questions must be resolved. For instance:
- Could a trademark be deemed famous in the metaverse but not in the physical world?
- What will future trademark license deals look like in the metaverse?
- How will trademark franchising and other business collaboration models be implemented in the metaverse?
- What will be the approach to protection under trademark, patent, and copyright law when virtual worlds are combined as holograms with real-world visual appearances?
Next Steps and Considerations
Enterprises should consider protecting and registering their trademarks in the field of interconnected virtual reality for the following legal and commercial reasons:
- Brand Protection and Enforcement: Depending on an entity’s business model and future product/strategy, companies should consider a proactive approach and update their trademark protection and IP contingency prevention plans. As more businesses operate in the metaverse, brand monitoring expenditures to detect invalid or fraudulent use of trademarks are likely to keep increasing. At this point, it is too early to determine how brand protection and enforcement will unfold in the metaverse. Inevitably, however, commerce in the metaverse/virtual world will involve the fraudulent use of trademarks by third parties in a confusingly similar or identical way. Companies already operating in the virtual world or planning to do so should anticipate such potential risks by registering their trademarks for use in a virtual marketplace. Doing so will give companies a better and more efficient way to enforce trademark rights if the prospect of litigation arises.
- A Holistic Approach to IP Rights: Linked to brand enforcement, the onset of the metaverse underlines the importance of considering IP rights holistically. Business models and core products and services offered in the metaverse emphasize the interconnectivity of IP rights like never before. A virtual business may have – as a primary core asset – a virtual product design, aspects of which may need protection as trade dress under trademark law, through a design patent, and under copyright law. In order to obtain unquestionable ownership of such a virtual product, especially in a legal action, IP protection must be carefully considered and addressed in a more diligent manner.
- Market Presence: From a marketing and sales strategy point of view, once enterprises decide to operate in the metaverse and proceed to protect their assets in the virtual world, they will have to come to grips with the fact that such marketing could reach new classes of worldwide consumers at an unprecedented pace. Because of these new platforms, enterprises will have a new instrument for their brand
Thomas W. Brooke is a partner in Holland & Knight’s Washington, D.C., office and serves as litigation counsel in major intellectual property disputes across the globe. He also advises clients on trademark selection, copyright and trademark registration around the world, licensing and technology transfers. Rodrigo Javier Velasco is an international law clerk from El Salvador and graduate of the Universitat Internacional de Catalunya and IE Law School in Spain.
Holland & Knight LLP is an American multinational law firm with more than 1,700 lawyers and other professionals practicing in more than 200 areas of law with 35 offices in the United States, Europe, Latin America, and North Africa.
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