Metaverse Trademark Issues Series (1):Have You Deployed Your Trademarks to Embrace the Metaverse? (Taiwan)

November 2022

Jane Tsai and Jiselle Ong

What is the metaverse? According to the BBC, the metaverse is an online world, a virtual environment where people can play, work and communicate, often wearing VR (virtual reality) devices.[1]  Since Facebook announced its name change to Meta in October 2021, major multinational companies have been actively deploying metaverse trademarks, and there have been metaverse-related trademark infringement lawsuits in the United States. Zuckerberg hopes that the metaverse, as a new ecosystem, will bring millions of jobs to creators.  Are you ready in your trademark deployment to embrace this booming metaverse business opportunity?

I. The metaverse trademark deployment of multinational corporations

Since October 2021, about one year ago, many multinational corporations, including Nike, the WalMart supermarket chain, Sony Music, Ford Motor, etc., have followed the footsteps of Facebook and been actively deploying the metaverse trademarks by filing metaverse-related trademark applications, as illustrated by the following examples:

1. Nike applied to register “NIKE”,“”, “JORDAN” and other trademarks for various virtual goods and virtual services, including downloadable video files of virtual goods (Class 9), virtual goods retail services (Class 35), virtual reality playground services (Class 41), etc.[2]

2. The WalMart supermarket chain applied to register the “WALMART” trademark for goods and services such as downloadable software for managing digital currencies (Class 9), online retail services for virtual goods (Class 35), and financial transaction services for virtual currencies (Class 36).[3]

3. Sony Music applied to register figurative marks “ ” for downloadable audio files and live performances verified by NFTs[4] (Class 9), the management and marketing of music and performing artists (Class 35), the provision of online entertainment and the production of podcasts (Class 41), etc.[5]

4. Ford Motor Group filed as many as 19 metaverse-related trademark applications at one time, planning to register its “FORD” and other automobile brand trademarks for the NFT-authenticated downloadable multimedia files of virtual cars and SUVs (Class 9), online retail store services displaying NFTs and digital collectibles (Class 35), online provision of entertainment services with non-downloadable image files of virtual cars, SUVs, and other goods (Class 41), and online provision of goods or services for use in virtual world such as non-downloadable image files of digital cars and SUVs (Class 42).[6]

5. Payment giant Visa applied to register the “VISA” trademark for virtual currency financial services (Class 36) and the provision of non-downloadable software for users to trade virtual currencies, cryptocurrencies, or NFTs (Class 42).[7]

II. The emergence of metaverse trademark infringement lawsuits in the U.S.

In May 2021, U.S. NFT artist Mason Rothschild launched a crypto-artwork called “Baby Birkin” NFT, an NFT whose prototype is Hermès’ famous Birkin bag with a 40-week-old fetus design on it.  The NFT was sold for US$23,500 immediately after its launch and was subsequently resold for US$47,000.  In view of the popularity of the “Baby Birkin” NFT, Rothschild further launched a limited edition of 100 “MetaBirkins” NFT works at the end of 2021, also based on the Hermès Birkin bag and covered with various patterns of faux fur.  The artist’s vision is to “pay homage to the classic Hermès Birkin bag” and to promote the idea of not using fur and alternative textiles.   These NFT works have been very popular with consumers and have sold for between US$15,200 and US$45,100 per NFT, with total sales of over US$1.1 million as of January 2022.

Hermès originally thought that the “Baby Birkin’ NFT was just a one-time harmless joke and did not take immediate legal action, but after the artist launched 100 pieces of “MetaBirkins” NFT and created a sensation, Hermès decided not to put up with it anymore and filed a lawsuit in January this year against the artist Rothschild for the use of the above-mentioned “MetaBirkins” series of NFTs. Hermès stated that the series involved the use of Hermès’s registered “Birkin” trademark and the trade dress of the Birkin bag and constituted trademark infringement.  Thus, Hermès requested that the infringement be stopped and claimed damages equivalent to the total sales profit and three times of its amount.[8] 

In addition to filing a trademark infringement lawsuit, Hermès also strengthened its metaverse trademark deployment in August this year, including the application to register the trademark “BIRKIN” for NFTs-authenticated downloadable multimedia files of leather, jewelry, and other artworks (Class 9), the provision of goods and services such as online trading platforms for virtual goods such as NFTs (Class 35), so that its trademarks are more comprehensively protected in the metaverse world.[9]

III. To embrace the business opportunities brought by the metaverse, how to deploy your trademarks?

Many multinational corporations have taken the initiative to accelerate their trademark presence in the metaverse after October 2021, but there are also companies like Hermès that have taken legal action for trademark infringement in the virtual world and are rushing to mend their ways to strengthen their trademark presence in the metaverse.  In the face of booming business opportunities in the metaverse, have you formulated your trademark deployment strategy?

As for how to carry out the metaverse trademark deployment, Taiwan Intellectual Property Office (hereinafter, the “TIPO”) has just issued a guideline on domestic and foreign trademark deployment strategies.  Trademark owners are recommended to consider if to apply to register trademarks for the following goods or services:[10]

Class Goods or Services
 Class 9 Downloadable images or software of virtual goods for the use in online and online virtual worlds, i.e., virtual goods images featuring OOO (insert in the name of the type of physical goods here, e.g., sneakers, clothing, bags, artworks, and toys)
 Class 35 Virtual goods retail services, i.e., online retail services for OOO (insert the name of the type of physical goods here) used in a virtual environment
 Class 41 Entertainment services, i.e., online gaming services or virtual reality playgrounds that provide access to virtual images of OOO (insert the name of the type of physical goods here)
 Class 42 Non-downloadable virtual goods image files or software that can be used in online and online virtual worlds, i.e., virtual goods images featuring OOO (insert the name of the type of physical product here)

TIPO’s suggestion that trademark owners should file new trademark applications for goods or services in the virtual world shows that TIPO does not consider that goods or services in the virtual world are necessarily the same or similar to those in the physical world, and therefore suggests separate trademark applications should be filed.  However, at what time and with what kind of trademark design should the trademark owner actually carry out the metaverse trademark deployment? And how should the actual designated goods or services for the trademarks to use on be planned?  All these are related to the trademark owner’s overall trademark strategy planning, and the trademark owner should seek professional legal advice in a timely manner to find out the most effective metaverse trademark deployment arrangements.

[1] (Last reviewed on November 21, 2022).
[2] U.S. Patent and Trademark Office (USPTO) Serial Nos. 97095855, 97095944, and 97096950.
[3] USPTO Serial Nos 97197296, 97197298, and 97197301。
[4] NFT is an acronym for “non-fungible token,” which is a unique digital asset whose ownership is traded and recorded on blockchains.
[5] USPTO Serial No. 97571005
[6] USPTO Serial No. 97577177
[7] USPTO Serial No. 97643604 and 97643605.
[8] U.S. Litigation Case No. 1:22-CV-00384
[9] USPTO Serial No. 97566629.
[10] TIPO of the Ministry of Economic Affairs, The Domestic and Overseas Trademark Deployment Strategy Guide, printed in October 2022, page 31.

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