Trade Marks in a Whole New World

Have you considered how to protect your brand in the metaverse? With the threat of third parties and trade mark trolls getting there first, as well as the exciting possibility for new revenue streams, this is something all consumer brands should be considering.

The metaverse as described by Meta (formerly Facebook) is “the next evolution of social connection” broadly speaking the metaverse is a virtual 3d space which uses technology such as virtual reality (VR) and augmented reality (AR) to allow interaction with other users, currently through VR headsets. Those that have invested in the metaverse believe it's a space we will be spending increasing amounts of time in whether for socialising, shopping, entertainment or even working. Over recent months there have been a plethora of trade mark filings in the US for virtual goods by big brands such as Nike, Converse, Burberry, Bobbi Brown and New Balance to name a few. In February of this year McDonald's filed a number of trade mark applications (again in the US) for a range of virtual goods and services such as virtual food and virtual restaurant services that include both virtual and actual goods. The metaverse is an emerging landscape, but an emerging commercial landscape with many marketing opportunities so it's no surprise that big brands not only want to have a presence in it but also want to protect their brands just as they do in the real world. Opportunists have already tried to file for trade marks for virtual goods in the name of Gucci and Prada. It's clear to see why global fashion brands and the mighty McDonald's have filed trade mark applications in the metaverse. These brands not only have the capital to invest in tech (still in its infancy) but also attract the type of audience in the metaverse that will buy into their virtual goods and services. Of course, it's great for brands to be a step ahead of the competition and extend their trade mark protection to cover the metaverse but it's worth bearing in mind that UK trade mark applications are filed on the premise that the trade mark is already in use or the applicant has the bona fide intention to use the mark. If a trade mark is not used for the goods and services included in its application in the five years following its registration, it's vulnerable to cancellation on grounds of non-use by third parties. The US has an even stricter use requirement for its national filings that requires evidence of actual use of the goods and services contained within an application before a trade mark can be granted. Interestingly, many of the trade mark filings for virtual goods and services that have been filed in the US have been filed on an intent to use basis, meaning the applicants will be required to provide proof of their marks being used for virtual goods and or services before being granted. The metaverse is inevitably another market place for brands, where there are opportunities for new revenue streams from NFT's, licensing opportunities, as well as the added prestige and brand visibility that comes with being at the forefront of new technology. However, as with all market places there will be opportunists who will try to ride on the coat tails and exploit existing brands' reputation and goodwill.

If this is an area that you are interested in, please get in touch with Paul Taylor or Serena Drummond to discuss how best to protect your IP in this new market as the real and virtual world begin to merge.