It is already well known that Nike, the apparel giant, has taken its first steps into the Metaverse. In order to do so, they started early to deal with one of the main issues related to the protection of its renowned trademarks in the virtual world, which still lacks a dedicated Patent and Trademark Office.
On October 27 and 28, 2021, the Oregon based company, has filed several new trademarks in certain classes of goods (9, 35, 41) with the Us Patent and Trademark Office (USPTO) for use in connection with, inter alia, “downloadable virtual goods, namely computer programs featuring footwear” (i.e., digital sneaker NFTs) and “retail store services featuring virtual goods, namely footwear” (i.e., a digital sneaker NFT trading platform). In total, seven different applications have been submitted, such as the brand’s famous slogan “Just Do It”, its swoosh logo and also the “Air Jordan” and “Jumpan” logos.
This – together with the recent acquisition of RTFKT, a digital art and collectible creative studio that has created some of the most popular apparel-related digital artwork NFTs to date – a part from disclosing plans of making and selling virtual Nike-branded sneakers and apparel while, reveals Nike’s concern in protecting them from being turned into NFTs by others (for instance, the recent complaint v. StockX is precisely about this topic).
This gives us the chance to reflect on a couple of issues related to trademark registration for use on a digital environment. On one side it must be considered that trademark protection has territorial nature, so local registration could not be enough when an illicit conduct is carried out in a virtual reality space; a problem already known in respect to the Internet to which we are used to, but that could become more intense in the transition to the Metaverse. On another side, it doesn’t seem so straightforward that registration in class 9 of the Nice classification would be the right option in such cases; in fact, it could be argued that virtual goods (such as sneakers) should be registered in the corresponding “physical” goods classes (class 25 for footwear). And in that case, wouldn’t it be possible that the original registration, which probably did not take into consideration an actual distinction between digital and physical goods, be enough for protection to this extent? That would imply that no new registration would be needed to protect trademarks in the Metaverse.
Update: July 2022
Recently, also EUIPO has received a large number of applications containing terms related to virtual goods and non-fungible tokens (NFTs), to the extent that the Office deemed appropriate to spread some “guidelines” on this topic. The approach taken is consistent with the format of U.S. trademark applications. A first indication from EUIPO is that virtual goods are proper to class 9 because they are treated as digital content or images. However, the term virtual goods on its own lacks clarity and precision so must be further specified by stating the content to which the virtual goods relate (e.g. downloadable virtual goods, namely, virtual clothing). A part form that, interestingly EUIPO pointed out that “NFTs are treated as unique digital certificates registered in a blockchain, which authenticate digital objects but are distinct from those digital objects. For the Office, the term non-fungible tokens per se is not acceptable. It is necessary to specify the type of digital object authenticated by the NFT”.
