traDemarkproteCtioNForvirtuaL proDuCtsaNDserviCes
Intellectual Property law Section
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present at least the following two challenges : ( 1 ) properly identifying and classifying the virtual goods and services under the current international classification system , and ( 2 ) proving that the virtual goods and services satisfy the “ use in commerce ” requirement . Let ’ s take a closer look at each of these two issues .
Identifying and classifying virtual goods and services
The U . s ., along with most industrialized countries , uses the international trademark classification system established by the nice Agreement signed in 1957 . This classification system consists of 34 classes of goods and 11 classes of services . Every trademark application must precisely specify the goods or services for which the trademark will be used and identify the international class into which these goods and services fall . not surprisingly , current international classes do not have a category into which virtual goods and services would neatly fit . For this reason , various companies take different approaches when filing their metaverse trademark applications . For example , McDonald ’ s described its upcoming virtual offerings as “ virtual food and beverage products ,” classifying them in the International Class 9 , which pertains to computer software . on the other hand , nike took a different approach by classifying its “ virtual footwear and clothing ” in International Class 35 , which pertains to retail store services and international Class 42 , which covers entertainment services . Because the metaverse trademarks filings are so recent , the UsPTo has not yet ruled on them . Therefore , in the meantime , trademark applicants are resorting to a fit-a-squarepeg-in-the-round-hole approach as they struggle to classify their virtual products and services using the existing trademark classification system .
Does the virtual marketplace satisfy the “ use in commerce ” requirement ?
The U . s . trademark law requires that to register a trademark , the applicant must prove that the applied-for trademark is being used in commerce for the specified goods or services . Furthermore , the UsPTo rules explicitly prohibit registration of a trademark that is “ in use in commerce that cannot be regulated by the U . s . Congress .” Accordingly , there is a cloud of uncertainty regarding whether the U . s . Congress is currently regulating the metaverse . In addition , it is unclear whether goods and services that are sold and consumed exclusively in the virtual realm by virtual avatars fall under the current definition of the “ use in commerce .” Because most trademark applications for virtual products and services are currently filed on an intent-to-use basis , the trademark applicants do not have to immediately prove compliance with the “ use in commerce ” requirement . Thus , it may be years until we have definitive answers to these questions . It is certainly an exciting time to be an intellectual property attorney . n
Author : Andriy Lytvyn – Hill Ward Henderson
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