Insights

How to trade mark the metaverse

Posted Thursday 5th May 2022

Morgan Stanley estimate that by 2030 the luxury goods market could grow by 10 per cent and increase pre-tax earnings by about 25% simply by capitalising on metaverse gaming and non-fungible tokens, while Bloomberg anticipate the industry to reach a value of almost $800 billion by 2024.

metaverse

“Metaverse” refers to a virtual reality world within which users can interact with each other. Non-fungible tokens, on the other hand, are data stored on a blockchain and accessed within such virtual realities, often representing in-game items such as artwork, character customisations or real estate.

Nike leading the change

Among the many companies looking to capitalise on this opportunity is Nike. In December of last year, Nike filed a total of seven trade mark applications with the US Patent and Trademark Office (“USPTO”). These include applications for the iconic swoosh logo, the “Just Do It” slogan and Air Jordans designs. The applications include multiple classes, covering both downloadable and non-downloadable virtual goods such as trainers and other in-game fashion items.

The company has also opened a virtual world, Nikeland, in the metaverse platform Roblox, in which users can access a variety of Nike products and play games. In addition, Nike has recently purchased RTFKT, a company producing trainers and other items to be worn in virtual environments. Together, these two new ventures put Nike at the forefront of the metaverse fashion offering. Nike can now create virtual samples at a fraction of the cost incurred by producing physical goods.

Luxury brands follow suit

The exploration of virtual commerce has expanded to luxury brands as well. Balenciaga, DKNY, Gucci and Ralph Lauren have all filed for similar trade mark protections in the US. Virtual stores with virtual goods and digital collection services unique to the metaverse can present themselves as limitless new markets.

What can be protected

Although the protectable assets in the metaverse are still unclear, they are likely to extend to all trade mark types such as logos and slogans, as well as other forms of IP, including copyright and designs. With its applications including marks that are already very established in the real world, Nike will almost certainly succeed in protecting its logo, slogan, and designs in the metaverse. In addition, famous brands with famous marks, such as Nike, will likely be successful in opposing any metaverse applications that are identical or similar to the company’s “real-world” marks.

Smaller companies or younger businesses, on the other hand, could be hijacked by opportunists in the metaverse in the same way as some fashion brands have been seeing their IP rights challenged internationally. With less recognised marks, some businesses may struggle to dispute registrations if they are not the first to register.

The way forward

IP regimes will inevitably need to develop ways to protect rights and respond to potential infringements in the virtual world. This is especially true in cases where there are no pre-existing “real-world” rights for the relevant goods or services.

With the first ever entirely metaverse-based fashion week having just taken place on the Decentraland platform between 24 and 27 March, this is only the beginning for retailers in the metaverse – no matter how early in the brand journey they may be.


This article is for reference purposes only. It does not constitute legal advice and should not be relied upon as such. Specific legal advice about your specific circumstances should always be sought separately before taking or deciding not to take any action.


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