In October 2021, Mark Zuckerberg announced that Facebook® would be changing its name to Meta®. The move signaled that the company would focus its future on the new “metaverse,” investing in building out the virtual space. More broadly, the name change signified a belief that the metaverse would come to play a significant role in the lives of consumers. What does this mean for you? It’s time to start planning the future of your brand today.

The reality of the digital world

The metaverse is an entirely digital space where people can work, shop, learn, go to events and play games together in real-time through built-out environments. In other words, the future of the internet.

Even though the full reality of the metaverse has yet to be realized, the pieces are being built. As people migrate online, more companies will follow.

Some brands are already carving the path: Games like Fortnite® are holding virtual concerts, companies are selling virtual real estate and Meta® rolled out virtual fashion stores filled with Prada®, Balenciaga® and Thom Browne® for avatars. The presence of these major brands in the metaverse marks the importance of thinking about how you’re going to protect your brand’s image in those spaces. Here at Addison Whitney, we’re already thinking about branding for the metaverse, with trademark at the center of it all.

Trademarks in the digital world

Why are trademarks so important when it comes to branding? They provide legal protection against counterfeit and fraud and help consumers easily recognize a brand. The name Nike® and its swoosh logo are both registered trademarks, meaning if anyone attempts to use their name or logo without permission to sell similar goods, they may face legal action.

And much like in the real world, trademarks protect digital content. As the metaverse develops, and more real-world goods and services start to have digital counterparts, it will become harder to register trademarks in the future.

Although the metaverse is a nearly limitless space, the international classes under which trademarks are filed are much more finite. International classes are a set of internationally agreed-upon categories that represent every type of good or service a trademark can represent, from clothing to pharmaceuticals and everything in between.

When trademarking in the metaverse, we must navigate the fact that digital goods fall into a different international class than physical ones. A shirt would normally fall under class 25 for clothing, but a digital representation of a shirt would fall under class 9 for digital goods. Not filing a trademark in class 9 for a shirt in the digital world would allow for trademark trolls, people who attempt to register trademarks for known names with no intent to use.

Although this is not much of a problem in the United States, where trademark law requires use or an intention to use for the filing to be successful, it can become an issue elsewhere. In most other countries, trademarks are granted to whoever files first. This can lead to a trademark being filed with the specific intent of blocking someone else from filing it or having them pay money to use it.

Another risk is a trademark already being spoken for in specific class in the digital space. If a health company wants to start offering virtual health care visits in the metaverse, they might find that a company with the same name has already filed a trademark for a virtual beauty clinic. Although digital services are not listed in a completely different class like digital goods, the type of competition is different when digital services are listed on the trademark being filed due to likelihood of confusion. A company offering online counseling is not likely to be confused with a veterinary clinic with the same name, but if they are both offering services in the metaverse, it becomes far more problematic.

Protect your brand with trademarks

You might be asking: If the metaverse isn’t fully realized, why should your brand care? With an app for practically everything, much of your consumers’ lives already take place in a digital space. For instance, many pharmaceuticals are being launched with accompanying apps that track patient symptoms or asset use. Names for apps like these aren’t just competing against other pharmaceutical names but other smartphone apps.

Of course, just because a name already exists for an app, doesn’t mean it can’t be used. Likelihood of confusion is one of the biggest factors in determining trademark viability. Since oasis is a common word, there can be two apps called Oasis, without too much confusion, long as they’re serving different purposes. However, two apps named Kinexial are far more problematic. Thus, as more apps are released, it will become harder and harder to file trademarks.

This is not to say that you should immediately rush out to file trademarks for your brand in classes that represent digital spaces. Instead, you should think about what you want your brand’s digital footprint to be. Do you think you’ll want to develop an app around one of your products in the future? Can you imagine your brand existing or selling goods in the metaverse?

Ready to start planning your brand’s future? Addison Whitney will make your job easy. Even if your company isn’t planning on immediately filing for a digital product now, we’ll help you plan your brand’s future and employ our trademark expertise to ensure your brand is protected in the digital world.

It’s an undeniable reality that as the world becomes more digitalized, it will become harder and harder to file trademarks for digital goods or services – but we’ll be right by your side through it all. And despite the challenge, having more spaces to represent a brand and interact with consumers is never bad. It makes the brand harder to protect via trademark, but that is simply the price of progress.