Trademark Portfolio Management in Metaverse

How to arrange brand strategies in response to Metaverse?
What goods/services should companies apply to obtain full protection of their trademarks?

Chien Yeh & Associates can assist the trademark portfolio management and register the trademark in relation to “Metaverse” in Taiwan and China.

The term “metaverse” has gone viral since Facebook rebranded its name to Meta in October 2021. Some brand owners successfully enhanced their brand visibility and recognition in virtual worlds since the use of trademarks is prevalent in the metaverse and the proliferation of user-generated content nowadays.

The followings are examples showing some famous trademarks used in the virtual worlds:

  • Use of “Mercedes-Benz logo” in the game called “Grand Theft Auto (GTA)”.1
  • Use of “Humvee”2 in the game called “Call of Duty”3.
  • “DELL”6, “Hello Kitty”7 and “Mercedes-Benz”8 hold exhibitions in the virtual worlds.

Since Asia has been ahead of the curve when it comes to digital adoption, Nike takes the lead in applying for their trademark applications in Taiwan, covering goods “virtual sports shoes, clothing or other wearing appliances”, which will be used for virtual item transactions. By doing so, Nike not only prevents someone to use their trademarks in the virtual world but also enhance their brand value.

No.

Country

Mark

Classes

1

Taiwan

 

(Trademark Appl. No. 110077008)

Applicant:


NIKE INNOVATE C.V.

Class 09:
Downloadable virtual goods, namely, computer programs featuring footwear (including boots, shoes and hosiery), clothing, headwear (hats), eyewear (eyeglasses), bags, sports bags, backpacks, sports equipment, art, toys and accessories for use online and in online virtual worlds.

Class 35:
Retail store services featuring virtual goods, namely, footwear (including boots, shoes and hosiery), clothing, headwear (hats), eyewear (eyeglasses), bags, sports bags, backpacks, sports equipment, art, toys and accessories; on-line retail store services featuring virtual merchandise, namely, footwear (including boots, shoes and hosiery), clothing, headwear (hats), eyewear (eyeglasses), bags, sports bags, backpacks, sports equipment, art, toys and accessories.

Class 41:
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.

2

USA

(Trademark Appl. No. 97096366)

 Applicant: Nike, Inc.

Class 09:
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:
Retail store services featuring virtual goods, namely, footwear, clothing, headwear, eyewear sports bags, backpacks, sports equipment, art, toys and accessories for use online; on-line retail store services featuring virtual merchandise, namely, footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys and accessories.

Class 41:
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.

 

To respond to the business opportunities of Metaverse, what steps should IP holders take?
The related classifications and goods/services to be designated are set forth for reference:

Class 09:

Class 35:

Class 41:

  •  Applications programs, downloadable；
  • Downloadable virtual goods featuring computer software programs related to video games and in-game resources, tokens and virtual currencies；
  • Downloadable virtual goods, namely, a computer program that provides digital tokens for online virtual worlds and computer games；
  •  Downloadable virtual goods, namely computer programs based on [specifying the goods] used online and in virtual worlds.
  •  Retail store services featuring virtual goods, namely, [specifying the goods].
  • Entertainment services；
  •  Providing online games via internet；
  • Providing online  virtual reality game Services via internet;
  • Provide online video watching service ;
  • Providing undownloadable online music ;
  • Providing online services browsing dynamic images, static images, dynamic images with sound, static images with sound of virtual avatars;
  • Entertainment services, namely providing undownloadable [specifying the goods] used in virtual environment.
Legal advice for trademark filing in relation to Metaverse.

Reference
1. https://dodoconverter.com/search.php?search=GTA+San+driving+on+Android%27
2.https://www.callofduty.com/tw/zh/blog/2021/08/Announcing-Call-of-Duty-Vanguard
3.https://www.amgeneral.com/news-events/events-schedule/
4.https://nwn.blogs.com/nwn/2006/12/the_second_life.html
5. A Coca-Cola vending machine from the Japanese release of Shenmue for the Sega Dreamcast
https://www.slashgear.com/shenmue-hd-remaster-possibly-on-the-way-from-sega-13439975/
6.Dell Booth in Second Life 2007 https://newskks.com/game/183041.html
7. Astralia is a 100% mesh brand in Second Life bringing you high quality furnishings, decor, and fashions.
https://secondlife.com/destination/astralia?d=astralia&lang=ja-JP
8. Mercedes-Benz Opens Virtual Brand World in Second Life https://www.benzinsider.com/2007/02/mercedes-benz-opens-virtual-brand-world-in-second-life/