Fighting Old Battles on New Grounds

As opportunities in the virtual worlds continue to grow, the importance of securing legal protection to discourage and defend against brand infringements will also increase…much like the real world. Examples can already be found:

 Hermès

We can think of Hermès’ lawsuit against NFT artist (Mason Rothschild) for allegedly profiting from the brand’s name in his NFT ‘Metabirkins’ collection – sold for a reported $1 million. Rothschild was accused of infringing the famous BIRKIN trade mark by adding the generic prefix “meta” to denote fake Hermès products in the metaverse.  As a consequence, Hermès filed multiple Metaverse trademarks, a move that was refuted by the Group’s CEO, Bernard Arnault, just a month prior to the lawsuit. 

Nike 

Arguably the most successful brand in the Metaverse so far, Nike alleged that the sneaker resale marketplace StockX had attempted to mislead consumers in the NFT Marketplace by selling unauthentic virtual goods based off their trademarks. Although the case is not dismissed yet, Nike is pursuing its progression into the virtual worlds with the creation of its own web3 platform, .swooch, subject of multiple trademarks applications on its own. 


The most effective way to safeguard a brand in the Metaverse is to register the name, logo, or any phrase/slogan used to market virtual goods and services under a trademark. The trademark exists as an official confirmation identifying the legal owner of said products, meaning that the only one allowed to use a particular branding is the organization who filed to trademark it. Their benefits can be summarized as:
 
✅  boosting consumer trust in the brand

✅ Preventing unauthorized copycats from attempting to utilize products within the Metaverse

✅ Protecting retail store services that feature virtual goods to prevent bad faith applications


To get a trademark, an application must be made to the U.S Patent and Trademark Office (USPTO) whilst navigating the examination process, since Metaverse trademarks are granted by the USPTO. The process of filing a trademark can take up to 12 months. 

These cases shed a new light not only for companies and their brands, but also for digital artists. Even if the brand has no intention to enter the Metaverse – at least for now – filing for trademark will only enhance brands protection on new grounds . At the end, it’s better to be safe then sorry…