Last year Social Media giant formerly known as “Facebook” rebranded itself as “Meta” and its CEO Mark Zuckerberg announced that Meta is creating a virtual universe which it named as the “Metaverse.” Metaverse as the name suggests is a virtual universe where users will have avatars and through their avatars, users will be able to experience all everyday activities, like roaming around, shopping, gaming, entertainment, eating out, and the like virtually. Hence the metaverse will completely revamp the e-commerce world and give users an experience they have never experienced. A three-dimensional digital world where brands could have their virtual outlets, restaurants, theatres, vehicles, and almost everything that brands do in the real world. Although the Metaverse has not yet arrived, but brands are already in the race trying to posiotion themselves in the multiverse in their respective categories, as every brand wants to take maximum advantage of the three-dimensional digital world.
Assets in the Metaverse
As brands own assets in the real world, they are also acquiring assets in the Metaverse too. Several brands from various categories have applied and are applying for trademarks to be used to provide virtual goods or services, content, videos, images, downloadable data, and NFTs. This would be helpful to advertise their products and services in the Metaverse which would increase their popularity and sales in the real world.
The USPTO has been flooded with brands trying to register their already registered trademarks for use of their brand in the Metaverse.
Mc Donalds made it to the news for filing several trademark applications for its well-known mark Mc Donalds to enable itself to operate virtual restaurants, cafés and provide virtual food items and Mc Café for providing virtual entertainment services like virtual concerts. However Mcdonald’s is not the only one doing so, there are players from all industries.
Popular Clothing brand Nike Inc. has also filed various trademark applications like its brand name NIKE, its slogan JUST DO IT, and its popular product JORDAN, AIR JORDAN as well as its iconic swoosh logo and others for covering virtual clothing and footwear in the Metaverse.
Retail giant Walmart has applied its mark WALMART to cover the creation and sale of virtual goods like electronics, toys, personal care products, and the like; it has also covered virtual retail store services in the Metaverse.
Footwear Brands Crocs and Skechers have also applied their trademark for covering virtual footwear, clothing, accessories, and the like.
L’Oreal has filed 17 applications seeking protection in respect of “digital media, namely, collectibles, art, tokens, and non-fungible tokens (NFTs). It has also sought protection for virtual cosmetics and makeup preparations to be sold for virtual avatars” and “retail store services and online store services in relation to virtual goods, namely, cosmetics, makeup preparations, cosmetic brushes, and makeup brushes.”
Women’s lingerie brand Victoria’s Secret is also in the queue, it has also applied for a trademark for “downloadable virtual goods” and also for NFT’s “the creation and trade of digital collectibles using blockchain-based consensus protocols and smart contracts”. It is planning to host virtual fashion shows, open retail store services featuring virtual goods.”
American Rapper Shawn Corey Carter, professionally known as Jay-Z, has filed an application for his name JAY-Z covering music, clothing, and jewellery goods in the Metaverse.
Representatives of late NBA star Kobe Bryant have filed a trademark application in January for the use of his name in online virtual art, avatars, virtual goods, or video games. The application also covers the use of any non-fungible tokens related to Bryant’s name or image.
We R K Dewan & Co. have applied for registration of our trademarks covering downloadable multimedia files containing artwork, text, audio and video files and nonfungible tokens, virtual legal services; virtual legal advisory services; virtual intellectual property consultancy services, providing information about intellectual and industrial property rights virtually, in the Metaverse.
Why Protection in Metaverse is necessary?
There have been instances of attempted land grab already in the digital universe Metaverse, as metaverse is providing an altogether new avenue, therefore opportunistic entities are rushing to get there first. For eg, an un-related opportunistic entity filed multiple trademark applications of Gucci and Prada’s logos in the metaverse for virtual clothes and virtual accessories. Another entity is selling clothes featuring trademarks of Louis Vuitton, Prada, and Chanel on Roblox (Roblox is a metaverse type platform and storefront where users go to play games. To make it clear Roblox is not a game but a virtual space where users can play game made by other developers. In another incident, an NFT inspired by Hermes’ Birkin Bag got sold for USD 23500 in June 2021.
These examples teach us two things; firstly, Metaverse might be digital and seem distinct from the real world, however, events that take place there in virtual reality, do impact trademark rights, and secondly, if you don’t protect your IP in the metaverse, somebody else could easily encroach upon it.
Why encroachment is easy in the Metaverse?
It is plain and simple, brand owners have registration in the class they work in, a restaurant may have registration in Class 43, a clothing company would have in Class 25 and for that matter, a cosmetic company will have in Class3. However, any third-party digital creator could register trademarks of these brands in Class 9 and create virtual restaurants, virtual clothing, and virtual cosmetics. Since the original brand owners do not have a registration for virtual restaurants, virtual clothing, and virtual cosmetics, the third party can get the registration easily.
To avoid such encroachment, we advise brands to secure their trademarks for the Metaverse, and at the same point be vigilant and monitor virtual platforms and make it a part of their online brand protection strategy.
Maybe with time, Metaverse operators will implement rules and policies to curb infringing activity, as YouTube and Amazon have done in the cyber world. However as of now the Metaverse is still in its development phase so expecting something like this would be a distant thought.
In any event, there is something I am sure about without any doubt, Metaverse will impact brands, whether or not they chose to get involved or to be in the in the Metaverse.