Best Practices For Drafting Trademark Applications for the Metaverse, NFTs and Blockchain

By Sophie Edbrooke, Esq.

The “idea” of the metaverse isn’t new – the term was coined in a science fiction novel in the early nineties and the idea of a persistent, virtual world has seen many iterations over the years. However, with recent improvements in VR technology, not to mention a pandemic keeping people socially distant, the dream of the metaverse looks ready to burst into the mainstream.

The same is true for blockchain technology, which promises a permanent, unchangeable ledger protecting from server crashes, fraudulent accounting, or other issues in the traditional marketplace. Blockchain technology might help power the future metaverse, like it is currently powering NFTs and other popular uses of the tech.

While the hype and enthusiasm are palpable, you need to always consider the legal implications of entering the metaverse with their business, and, in particular, how to protect your intellectual property in this space.

When filing trademarks in these cutting-edge spaces, the USPTO has not always kept up with the language and requires applicants to explain in layman’s terms what they intend to provide.

NFTs (Non-Fungible Tokens)

What are they?
Digital images or videos stored on the blockchain which ensures there is only one true owner of the underlying file. Imagine you owned the original Mona Lisa, everyone can make copies, but you have that one original canvas. An NFT is the digital version.

What can you file for?
When you enter the NFT space you can choose whether you intend to produce the NFTs (and their art) or you intend to sell the NFTs on a marketplace platform. If you intend for your NFTs to be virtual goods in the metaverse, you can also apply for the “entertainment services of providing digital goods.”

What you’d submit to the USPTO:

009: Downloadable image files containing artwork authenticated by non-fungible tokens (NFTs); Downloadable multimedia file containing video relating to [type of artwork] authenticated by non-fungible tokens (NFTs)

035: Providing an online marketplace for buyers and sellers of crypto collectibles; Providing an online marketplace for buyers and sellers of blockchain-based non-fungible assets; operating on-line marketplaces featuring crypto collectibles and blockchain-based non-fungible assets

041: Non-downloadable virtual goods, namely, non-fungible tokens; Non-downloadable virtual goods, namely, a collectible series of non-fungible tokens; Non-downloadable virtual goods, namely, a collectible series of images as embodied in non-fungible tokens; Non-downloadable virtual goods, namely, non-fungible tokens used with blockchain technology; Non-downloadable virtual goods, namely, non-fungible tokens used with a distributed ledger; Non-downloadable virtual goods, namely, digital collectible images using non-fungible tokens and blockchain technology

042: Creation of online retail stores for others in the nature of web-based service that allows users to create hosted crypto collectible and blockchain-based non-fungible token stores; Providing a web site featuring technology that enables internet users to create, bookmark, annotate, and publicly share data; Providing a members-only website featuring technology which provides members with the ability to access multiple databases for the purpose of purchasing crypto collectible and blockchain-based non-fungible tokens

Metaverse Services

What is it?
There is no clear consensus on what the metaverse is at this moment, but it is clear that it will be some form of the virtual world. At the purest definition, it will be hosted on blockchain, but that seems unlikely due to the sheer energy that will consume. Facebook, or Meta, seems to be at the forefront of created this “Metaverse” major platform, but until then, people are filing trademark applications for all sorts of things to be later narrowed down.

What can you file for?
You can either file for the large metaverse platforms that host these virtual worlds, or you can file for the goods and services ancillary to the platform itself – including the payment processing software for buying virtual goods or services in the metaverse. A lot of these identifications will look like traditional downloadable software or non-downloadable software applications; however, you can add some metaverse-specific language to ensure you are well protected.

What you can submit to the USPTO:

009: Downloadable software for creating virtual communities; Downloadable software for providing access to the metaverse; Interactive entertainment software, namely, computer and video game software; Software for downloading, transmitting, receiving, providing, publishing, extracting, encoding, decoding, reading, storing and organizing audiovisual, video-graphic and written data, namely, software for managing computer and video games for use in social networking; Software for sending and receiving electronic messages, graphics, images and audio and audio visual content via global communication networks; Computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; Downloadable image files containing artwork authenticated by non-fungible tokens (NFTs); Downloadable multimedia file containing video relating to artwork authenticated by non-fungible tokens (NFTs)

036: Creation and issuance of digital assets, digital tokens, crypto-tokens, utility tokens, non-fungible tokens (NFTs), digital collectibles, crypto-collectibles, cryptocurrencies, digital currencies and virtual currencies; Distribution, trading, lending, exchange, storage and transmission of digital assets, digital tokens, crypto-tokens, utility tokens, non-fungible tokens (NFTs), digital collectibles, crypto-collectibles, cryptocurrencies, digital currencies and virtual currencies; Cryptocurrency processing systems

038: Communications services; telecommunications; broadcasting services; electronic messaging services; streaming of audio, video and digital media content on the internet; streaming of electronic and video games; providing internet chat rooms; providing on-line forums for transmission of messages among computer users; streaming of data; computer aided transmission of information and images; providing an online community forum for users to share and stream information, audio, video, real-time news, entertainment content, and information; providing user access to digital images, text, audio, video, games, multimedia content, digital collectibles, crypto-collectibles, and non-fungible tokens (NFTs); electronic transmission of virtual and augmented reality content and data

041: Providing online non-downloadable game software; Entertainment services, namely, providing temporary use of non-downloadable computer games; Entertainment and education services, namely, providing online electronic, computer and video games by means of the Internet; Non-downloadable virtual goods, namely, non-fungible tokens; Non-downloadable virtual goods, namely, a collectible series of images as embodied in non-fungible tokens; non-downloadable virtual goods, namely, non-fungible tokens used with blockchain technology; non-downloadable virtual goods, namely, non-fungible tokens used with a distributed ledger; non-downloadable virtual goods, namely, digital collectible images using non-fungible tokens and blockchain technology; Non-downloadable virtual goods, namely, non-fungible tokens; non-downloadable virtual goods, namely, a collectible series of non-fungible tokens; non-downloadable virtual goods, namely, a collectible series of images as embodied in non-fungible tokens; non-downloadable virtual goods, namely, non-fungible tokens used with blockchain technology; non-downloadable virtual goods, namely, non-fungible tokens used with a distributed ledger; non-downloadable virtual goods, namely, digital collectible images using non-fungible tokens and blockchain technology

042: Providing a website featuring technology that enables users to create and participate in virtual communities; Providing online, non-downloadable software for users to create and participate in virtual communities; Providing a website featuring technology that enables users to access the metaverse; Providing online, non-downloadable software for users to access the metaverse; Providing a website featuring technology that enables users to communicate with other users via messages, video, and audio; Providing online, non-downloadable software for users to communicate with other users via messages, video, and audio; Authentication and certification of data relating to non-fungible tokens via blockchain

Blockchain

What is it?
At its most basic, blockchain is a database that records information and acts as a digital ledger. There is no one computer than “owns” the blockchain data, but it is shared and replicated across each computer on the blockchain. Blockchain is most well-known for keeping track of cryptocurrency transactions and NFT ownership.

What can you file for?
Since no one can own blockchain or a blockchain system, you will have to file for the services that you intend to host on the blockchain. This can be non-downloadable software hosted on blockchain, downloadable software for tracking anything ghosted on blockchain, or financial services and authenticating stored on blockchain. One of the most recent innovations on blockchain are smart contracts, or contracts that automatically execute when the conditions of the contracts are met.

What you can submit to the USPTO:
009: Downloadable computer software for managing and verifying cryptocurrency transactions on a blockchain; Downloadable software for blockchain-based [insert downloadable software operations here]; Downloadable computer software for managing cryptocurrency transactions using blockchain technology; Downloadable computer software for managing and validating cryptocurrency transactions using blockchain-based smart contracts

036: Cryptocurrency services, namely, a digital currency or digital token, incorporating cryptographic protocols, used to operate and build applications and blockchains on a decentralized computer platform and as a method of payment for goods and services

042: Providing a website featuring blockchain technology that enables users to [insert software operations here]; Providing software as a service (SAAS) services featuring software for the [insert industry] industry that uses blockchain technology to securely [insert software operations here]; Authentication of data in the field of [indicate field, e.g., works of art, financial transactions, medical records, etc.] using blockchain technology; User authentication services using blockchain technology for [specify the application of the services, e.g., cryptocurrency transactions, online software applications, etc.]

Cryptocurrency

What is it?
Bitcoin, Solana, Ethereum, or DogeCoin – you might have heard of these, but if you want to start your own cryptocurrency, what exactly is it? Simply put, it’s a new currency based on code. Instead of a typical bank account full of dollars, pesos, or yen, you own a new currency that isn’t based on physical money but on digital code.

What can you file for?
Like the other filings, you can either try to be a part of the new goods, or you can offer an incidental service. You can create a new code and a new currency, or you can offer a platform to trade the currency and a wallet to hold the currency – a bank of the internet era.

What you can submit to the USPTO:
009: Downloadable software for use in electronically trading, storing, sending, receiving, accepting and transmitting digital currency, and managing digital currency payment and exchange transactions; Downloadable software for processing electronic payments and for transferring funds to and from others

036: Financial services, namely, providing a virtual currency for use by members of an on-line community via a global computer network; financial services featuring cryptocurrency, namely, providing a virtual currency for use by members of an on-line community via a global computer network; Financial transaction services, namely, providing secure commercial transactions, payment options, and electronic funds transfer; financial services, namely, valuation and trading of digitized assets; Currency exchange services; on-line real-time currency trading; cash management, namely, facilitating transfers of electronic cash equivalents; digital currency exchange transaction services for transferrable electronic cash equivalent units having a specified cash value; Financial exchange; Financial information services; Financial information processing; Financial information provided by electronic means in the field of alternative assets; Financial services, namely, electronic financial trading services; Cryptocurrency trading services; Cryptocurrency exchange services; Financial consultation in the field of digital assets, namely, cryptocurrency, virtual currency, digital tokens, digital currency, decentralized application tokens and blockchain-based assets; Cryptocurrency payment processing

042: Providing temporary use of online non-downloadable software for use in electronically trading, storing, sending, receiving, accepting and transmitting digital currency, and managing digital currency payment and exchange transactions; Providing temporary use of on-line non-downloadable software for processing electronic payments

Web 3.0

What is it?
We’re currently in the Web 2.0 phase, and Web 3.0 is the next phase of the internet. Web 3.0 is going to be a decentralized internet not controlled by big companies but instead hosted on blockchain and by cryptocurrency owners. Web 3.0 will be data driven and try to provide greater user utility.

What can you file for?
The most likely filing for Web 3.0 is to offer a portal into Web 3.0. This is the equivalent of a modern Internet Explorer, Mozilla Firefox, Safari, or any other Web 2.0 Internet provider. These are also companies attempting to define Web 3.0 before Web 3.0 is fully launched.

What to submit to the USPTO:
009: Computer programs for accessing and displaying files on both the internet and the intranet using blockchain technology; network access server operating software for connecting computers to the internet and the intranet using blockchain technology; Computer browsing software, namely, software for browsing the global computer network and private networks using blockchain-based software; Computer software for providing access to the Internet using blockchain-based software; Downloadable application programming interface (API) software using blockchain technology

042: Application service provider featuring application programming interface (API) software using blockchain technology; Application service provider featuring application programming interface (API) software for allowing users to communicate via a decentralized internet using blockchain technology; Computer software development; Maintenance of computer software; Software design and development; Maintenance of computer software based on blockchain technology; Maintenance of software for Internet access; Services for maintenance of computer software based on blockchain technology; Maintenance and updating of computer software based on blockchain technology

What if you have a suggestion for the USPTO’s form language?

The USPTO knows it needs to adapt with the times and offers applicants, attorneys, and interested parties the opportunity to submit language to be “pre-approved” in the Trademark ID Manual. The Trademark ID Manual is a resource for applicants to see language that the USPTO has accepted previously for similar goods and services.

Gerben Perrott is proud to have attorneys submitting NFT, blockchain, and metaverse language to the ID Manual to help keep the USPTO current! If you have any questions about how to identify the goods and services of your company, feel free to reach out, and we’d be happy to help.

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Sophie Edbrooke, Esq.

Sophie Edbrooke, Esq. is an associate attorney at Gerben IP. She works closely with clients to provide individualized counseling on trademark and copyright matters, across a wide variety of industries. Before joining Gerben IP as an associate, Sophie worked for the firm as a law clerk and summer intern.