How to Get a Trademark for Virtual Goods

By Josh Gerben, Esq.

A rapidly growing number of the world’s most dominant and iconic brands have begun to realize that while they may own trademark registrations for their existing goods or services in the traditional marketplace, they do not own similar registrations for the metaverse.

As a result, there has been a remarkable increase in the number of trademark filings to cover “virtual goods” that can be bought and sold in the metaverse.

Fortunately, legal trademark protection for a virtual product or service utilizes the same process as the traditional marketplace: filing a trademark application with the United States Patent and Trademark Office (USPTO).

While the application process is similar, however, there are important items to consider when protecting your trademarks for virtual goods. Here’s how you can obtain your trademarks in the metaverse, and why it’s a good idea to get started today.

Why should I trademark virtual goods and services?

Whether it’s in the physical world or the metaverse, a federally registered trademark prevents any competitor from infringing on your name, brand, phrases, logos, or other protected material to confuse customers or damage your reputation.

Traditionally, that has been a powerful argument for seeking trademark protection in the U.S. and other countries where you intend to do business. It discourages others from registering similar names for their brand and provides a formidable legal defense against other forms of infringement.

From a practical standpoint, doing business in the metaverse is similar in many ways to a new product launch. One of the most important things to do is file a trademark application to protect your new goods and services —in this case, your virtual goods and services. This trademark filing will ensure you can:

• Build your brand identity and grow your customer base in a new economy, potentially at a lower cost than traditional marketing.
• Create new goods or services tailored specifically to the metaverse and virtual worlds.
• Sell or license your brand in the metaverse.
• Discourage digital squatters or copycats who would try to register similar names for use or resale.

Don’t wait to file for your trademark for virtual goods and services

We always advise filing any trademark application early, whether it’s in the physical or virtual world. The approval process is lengthy, and it’s important to begin protecting your trademarks as soon as possible.

As in the “real world,” a federally registered trademark is an effective way for existing trademarks to avoid legal issues over ownership in the metaverse, particularly as it begins to take shape. For new trademarks, it greatly reduces the risk of someone else applying earlier, especially since there is likely to be a great deal of competition in these wide-open virtual worlds.

Start by conducting a thorough search through the USPTO’s Trademark Electronic Search System (TESS) to make sure no one else has claimed that trademark for virtual goods and services. Search on a regular basis to make sure no one is infringing on the rights of your real-world trademarks as well.

Choose the correct classes for virtual goods and services

If you need to protect existing trademarks for product or service offerings in the metaverse, you still must file a separate application with the USPTO. This is because it is very likely your previous trademark registration covered only goods offered in the “real world” and not in “virtual worlds.”

This is an important distinction, since the “class of goods and/or services” under which trademark protection exists can make a huge impact on your ability to protect it in the metaverse.

For example, in addition to its existing trademark registrations, the iconic Ralph Lauren brand has now filed applications to cover virtual goods and services such as:

• Class 9 – downloadable virtual goods featuring footwear, clothing, and accessories for use in online virtual worlds.
• Class 35 – store services featuring virtual clothing and accessories for use in online virtual worlds.
• Class 41 – online, non-downloadable virtual clothing and accessories for use in virtual environments.

By filing to protect its products in the metaverse, Ralph Lauren has ensured that not only can it monitor and enforce its brand within the new space, but that it has also significantly strengthened and broadened its overall brand protection.

Experienced legal counsel can help you select the correct classification categories to protect your trademarks as you enter the digital marketplace.

Examine your trademark portfolio to protect virtual goods and services

Determining which trademarks to protect in the metaverse provides an excellent reason to audit your current trademark portfolio. Once an audit is completed, you should file any additional trademark applications to cover the new classes of goods and services that will be possible in the metaverse or other virtual worlds.

Consider your options carefully, and adjust your strategy accordingly. An experienced trademark attorney can help you weigh the benefits of filing for a metaverse trademark now against the potential need for corrective action later.

Prepare your trademark strategy for the metaverse

The metaverse presents unique opportunities for businesses that plan to offer virtual goods and services. It’s unclear how this digital economic environment will evolve, but any scenario will require retaining control over your trademarks and other intellectual property.

While the principles that apply in the traditional marketplace provide a useful blueprint for action, our experienced trademark attorneys can help you prepare a comprehensive strategy for a future in the metaverse. Contact us today to learn more.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.