Branding in the Metaverse: The Future of Virtual Goods Trademarks – The Fashion Law

Nike is not the only company thinking about the role of branding in the metaverse. The Beaverton, Oregon-based titan recently made headlines after filing a number of intent-to-use trademark applications in the U.S. and beyond for its most famous trademarks – such as its “Nike,” “Just Do It,” and “Jordan” word marks, its iconic swoosh logo, the Jordan silhouette logo, and a stylized combination of its name and the swoosh – for use on various virtual goods/services. Specifically, the applications suggested – and its subsequent launch of the Roblox-hosted Nikeland experience confirmed – that Nike was looking to use its famed marks on “downloadable virtual goods;” “retail store services featuring virtual goods;” and “entertainment services, namely, providing on-line, non-downloadable virtual footwear, clothing, headwear, eyewear, [and] bags,” among other things, “for use in virtual environments.” 
While Nike is an early-mover both in terms of its entrance into the metaverse (it first partnered with Roblox back in 2019 and with video game-makers before that) and in terms of its trademark filings, the Swoosh is not the only trademark that is going to populate the growing metaverse. Brands ranging from sportswear giants to luxury goods purveyors like Balenciaga and Gucci are readily considering – and in some cases, actively testing – how they can use the metaverse (i.e., a space that combines immersive virtual reality, massive multi-player online gaming platforms, and various other facets of the web) to connect with consumers and generate additional revenue. 
In that same vein, Nike is hardly the only brand seeking out trademark registrations in connection with such budding virtual ventures. In fact, since the news of Nike’s filings – most of which were lodged with the U.S. Patent and Trademark Office (“USPTO”) in late October – came to light in early November, a swiftly growing number of brands have filed applications for registration with the USPTO, and other national trademark offices, as well. 
In the immediate wake of the Nike filings, fellow Nike, Inc. owned footwear company Converse, for instance, filed a number of trademark applications on an intent-to-use basis for its word mark, its circular Chuck Taylor All Star logo, and its arrow and star logo for use on the very same types of goods and services as Nike. Its applications listed goods/services in class 9 (for “Downloadable virtual goods, namely, computer programs featuring footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys and accessories for use online and in online virtual worlds”); class 35 (for “Retail store services featuring virtual goods, namely, footwear, clothing, headwear, eyewear, sports bags, backpacks, sports equipment, art, toys and accessories for use online,” etc.); and class 41 (for “Entertainment services, namely, providing on-line, non-downloadable virtual footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys and accessories for use in virtual environments”). 
Abercrombie and Fitch followed suit shortly thereafter, filing applications for its name and various logos, as well as those of its Hollister brand, in Class 9. The same goes for fashion brand Alice + Olivia, and BB Brand Holdings-owned companies Tahari, Nanette Lepore, Catherine Malandrino, Bebe, Limited Too, Justice, and Hurley, among others. Around the same time, counsel for Urban filed applications for registration for Urban Outfitters, Anthropologie, Free People, resale/rental company Nuuly, and bridal brand BHLDN for use of their word marks in classes 9, 35, and 41. 
Vineyard Vines lodged applications for its name and whale logo in classes 9, 35, and 41. Bobbi Brown filed an application for registration for use of its name in connection with class 9 (specifically, non-fungible tokens), and class 42 (which covers “on-line non-downloadable virtual goods” and “NFTs or other digital tokens based on block chain technology”). And fellow beauty/skincare brand Clinique filed in classes 9 and 42, as well – albeit on an actual use (1A) basis, which is noteworthy given that the vast majority of brands have filed on an intent-to-use basis. 
Finally, some of the most recent applications for registrations come from some interesting names: Fast fashion company Fashion Nova, which filed on December 3 to register its name for use in classes 9, 35, 41, and 46, with the latter covering financial services, including digital tokens. Newly-public sneaker-maker Allbirds filed an intent-to-use application for registration for its word mark in classes 9 and 41, and fashion brand Telfar, which filed application for its name, TC logo, and a combination of the two in classes 9, 35, and 41. (It is not difficult to imagine a trademark application for registration coming at some point for a virtual version of Telfar’s hot-selling shopping bag.)
Still yet, BTS, the mega-famous South Korean musical group (and Louis Vuitton menswear ambassadors), appears to be looking to the metaverse, as well, as its label BigHit Music Co., Ltd. filed a number of trademark applications for registration with the USPTO for “Retail store services related to virtual good” and “Downloadable virtual goods, namely, computer programs” for the band’s name and various logos. The filings come as major entertainment companies in South Korea are paying attention to new technologies, including the metaverse and NFTs, in order to “utilize the growing worldwide influence of K-pop artists and their intellectual property, and create new and stable sources of income.”
While all of the aforementioned applications for registration were filed by counsel for the named brand or their parent company, a number of applications are starting to be filed for famous brand names by individuals that are unaffiliated with the brand in moves that appear to mirror an attempt to snag a registration before the bona fide brand can. Applications for registration for the Prada and Gucci word marks, for instance, have been filed with the USPTO for use on goods/services in classes 9, 35, and 41 by parties other than the brands, themselves. This is unlikely to pose real problems for the brands in the U.S., given that trademark rights are awarded based on actual use of a mark. (It is also worth noting that brands like Gucci, for example – which partnered with Roblox earlier this year and put its famous logos on a virtual experience and corresponding goods – are actively amassing trademark rights regardless of any trademark registrations by virtue of the fact that they have already begun using their marks in these classes of goods/services. These rights would trump any claimed by unaffiliated third parties.)
However, these rogue applications shed light on issues that brands will inevitably face if they are beaten to filing in other jurisdictions, such as China, where rights are granted on a first-to-file basis and trademark squatting is a cottage industry in itself. 
The trademark application filings come as consumers continue to spend more time, attention, and money on the web and in gaming experiences as a way to play but also as a mode of communication with others, something that has been accelerated by the pandemic. As the online experience continues to evolve further, the way that consumers are able to use it is changing, as well. The development of “web3” – or a decentralized version of the internet as we know it – is expected to “reshape art, commerce and technology; displace intermediaries; and put people more directly in control of their destinies,” as the New York Times put it recently. This includes a reimagination of how consumers interact with one another and brands, and how they represent themselves online. 
Given that this online evolution and the rise of the metaverse – which the newly rebranded Meta’s Mark Zuckerberg says is the “successor to the mobile internet” – is being touted as a $1 trillion opportunity, brands want in, as indicated both by their endeavors to date (from Roblox collaborations to fashion’s various ventures when it comes to NFTs), as well as the rising number of trademark filings. 
It is not yet clear exactly what the metaverse will look like, as it is very early days. Even still, the current form provides brands with opportunities. “It is a space that not only empowers the consumer, but also gives brands greater opportunities to be creative with their positioning,” according to Yonder Consulting director Ed Bolton. Brands “can embed awareness of their products and services in new ways within new and unexplored audiences without worrying so much about the [limitations that exist in the] ‘real world’ [or in] ‘real world outcomes.” 
“Aligning your brand with an experience relevant to your mission will render your products and services more rewarding and meaningful to consumers,” Bolton asserts. “These experiences may be fleeting,” but they enable brands to “plant the seed of awareness” in the minds of consumers and work towards additional opportunities that can deliver “more and more value to consumers.” And just as is the case when it comes to tangible goods, no shortage of those opportunities will be branded.
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