Securing Trademark Protection In The Metaverse - Fin Tech

The guide below provides some useful information on acceptable descriptions of metaverse-related goods and services in Canada, the United States (U.S.), The United Arab Emirates (U.A.E.), the European Union (EU), the UK and Singapore.

Given the emergence of virtual worlds and the metaverse, brand owners may wish to assess their own trademark portfolios with a view to expanding coverage to encompass this developing space. Virtual worlds permit the movement of digital goods themselves, and trademarks designed for real life goods may not necessarily extend to those digital worlds, depending on their application. In addition to considering potential enforcement mechanisms in the metaverse, brands can consider a proactive approach, with a view to creating protection strategies and potential language for filing trademark applications with respect to virtual worlds and digital elements.

As more creative metaverse-related uses emerge, goods and services will continue to be defined, more guidance will be issued, and the list of acceptable terms should further proliferate. In the meantime, we invite you to contact us for guidance in drafting potential new descriptions including, in some instances, strategizing with respect to populating the listing in the Canadian Manual of Goods and Services with proposed descriptions.

Descriptions of goods and services for the virtual/digital world field in:

Canada

We invite you to consider the goods and services currently recognized by the Canadian Trademarks Office and have listed a few examples in this article. While descriptions of goods and services that are not included in the Canadian Trademarks Office's Manual of Goods and Services may still be acceptable if described in ordinary commercial terms (terms commonly used in the relevant industry to describe the goods and services), filing applications in Canada using goods and services descriptions that are listed in said Manual will allow applications to reach the examination stage faster and will avoid Examiner's reports based on goods and services descriptions.

Virtual goods and cryptoassets including NFTs

Brands have begun experimenting with Non-fungible-tokens (NFTs) which have recently dominated headlines. The Canadian Trademarks Office recognizes a number of descriptions of goods (G) and services (S) with respect to NFTs and other cryptoassets encompassing generally classes 9 goods and 42 services.

Acceptable descriptions for NFTs and other cryptoassets in Canada include the NFTs themselves or software for an action related to the NFTs. Examples are goods that generally fall in Class 9 as follows:

Computer hardware for cryptocurrency mining
Computer software namely non-fungible tokens for facilitating commercial transactions
Downloadable computer software for [select: accessing, creating, exchanging, managing, selling, sending and receiving, storing, validating etc.] digital tokens and non-fungible tokens (NFTs)
Downloadable computer software for producing cryptocurrency wallets built on the blockchain to allow consumers to earn, use and trade non-fungible tokens for facilitating commercial transactions
Downloadable cryptographic keys for receiving and spending crypto assets
Downloadable music files authenticated by non-fungible tokens (NFTs)
Nonfungible tokens (NFTs) for use in authenticating ownership of digital files

Services related to cryptoassets including NFTs

In an alternative, acceptable descriptions can include services for cryptoassets including NFTs, such as platforms that provide an action with respect to NFTs. Examples are services that generally fall in Class 42 as follows:

Crypto mining services
Electronic storage of cryptocurrency for others
Platform as a service (PaaS) featuring blockchain based software platforms, namely, software for transfer or exchange of virtual currencies for information and files using smart contracts and conducting transactions
Platform as a service (PaaS) featuring blockchain based software platforms namely, software for transfer or exchange of virtual currencies for data using smart contracts for conducting transaction
Platform as a service (PaaS) featuring computer software platforms used to facilitate blockchain and distributed ledger technology to support a marketplace for roaming communication services between networks
Platforms for providing access to crypto-collectibles
Providing on-line non-downloadable computer software for use as a cryptocurrency wallet
Providing on-line non-downloadable software for generating cryptographic keys for receiving and spending cryptocurrency
Providing temporary use of non-downloadable computer software for [select: accessing, creating, exchanging, managing, selling, sending and receiving, storing, validating etc.] digital tokens and non-fungible tokens (NFTs)
Providing temporary use of non-downloadable digital tokens
Providing temporary use of non-downloadable non-fungible tokens (NFTs)
Providing temporary use of non-downloadable software for enabling members of an online community to receive and access to non-fungible tokens
Providing temporary use of non-downloadable software for enabling members of an online community to spend and trade cryptocurrency
Providing temporary use of online non-downloadable software for use in electronically [select: accepting, transmitting, sending and receiving, storing, trading etc.] non-fungible tokens
Providing temporary use of online non-downloadable software for use in electronically accepting digital currency
Providing temporary use of online non-downloadable software for use in electronically sending and receiving digital currency
Providing temporary use of online non-downloadable software for use in electronically storing digital currency
Providing temporary use of online non-downloadable software for use in electronically trading digital currency
Providing temporary use of online non-downloadable software for use in electronically transmitting digital currency
Software platforms for providing access to non-fungible tokens
User authentication services using blockchain technology

Electronic transfer of cryptoassets

The electronic transfer of these cryptoassets can fall within Class 36:

Electronic transfer of digital tokens incorporating cryptographic protocols used to operate on a computer platform in the field of blockchain technology
Electronic transfer of non-fungible tokens incorporating cryptographic protocols used to operate on a computer platform in the field of blockchain technology
Electronic transfer of virtual currencies
Virtual currency exchange
Virtual currency trading services
Cryptocurrency exchange services
Currency exchange, namely virtual currency exchange transaction services for transferrable electronic cash equivalent units having a specified cash value

Software for use in the metaverse

Examples of metaverse applications may take the form of software, games, digital goods (including "skins"), or avatars or the like for use in the metaverse that generally fall within Class 9.

Compilation and analysis of business data in the field of blockchain technology and cryptocurrency
Computer programs featuring badges for use in online virtual worlds
Computer programs featuring characters for use in online virtual worlds
Computer programs featuring clothes and accessories for use in online virtual worlds
Computer programs featuring emojis for use in online virtual worlds
Computer programs featuring stickers for use in online virtual worlds
Computer programs featuring virtual beauty products being skin care preparations, sun care preparations and cosmetics for use in an online virtual world
Computer software for blockchain data mining
Computer software for cross blockchain transfers
Computer software for developing, building, and operating consumer blockchain applications
Computer software for electronic trading of virtual currency
Computer software for interacting with blockchain platforms
Computer software for managing and validating cryptocurrency transactions using blockchain-based smart contracts
Downloadable computer software for managing and verifying cryptocurrency transactions on a blockchain
Downloadable content being images
Downloadable video game assets sold individually, namely downloadable digital files containing videogame avatars, clothing, pets, vehicles, items, tools, toys, terrain, 3D objects, textures, meshes, animations, sound effects, music, emotes, and gestures for use in video game development
Virtual assistant software
Virtual reality computer game programs
Virtual reality computer game software
Virtual reality computer games for use on cellular phones
Virtual reality computer games for use on mobile phones
Virtual reality computer games for use on notebook computers
Virtual reality computer games for use on personal computers
Virtual reality computer games for use on smart phones
Virtual reality computer games for use on tablet computers
Virtual reality game software
Virtual reality goggles
Virtual reality head-mounted video displays for use in playing video games
Virtual reality software for meditation classes
Virtual reality software for playing computer games

Metaverse-enabling hardware

These metaverse applications may also take the form of hardware, such as head-sets, which enable virtual reality platforms. Pre-approved terms generally fall in Class 9:

Electronic controllers for use with virtual reality headsets
Electronic virtual reality gloves
Headsets for virtual reality games
Virtual reality headsets adapted for use in playing video games
Virtual reality headsets and helmets adapted for use in playing video games

Unsurprisingly, the sale of these goods may fall into Class 35:

Online sale, wholesale and retail sale of virtual reality glasses

Marketplace for virtual goods

When the service being described is a marketplace for virtual or digital goods, the description will typically fall into Class 35.

Conducting interactive virtual auctions
On-line retail store services featuring virtual merchandise, namely, clothing, outerwear, headwear, and footwear, for use online and in online virtual world
On-line retail store services featuring virtual merchandise, namely, cosmetics, perfumery, and jewelry, for use online and in online virtual worlds
On-line retail store services featuring virtual merchandise, namely, handbags, wallets, and luggage, for use online and in online virtual worlds
On-line retail store services featuring virtual merchandise, namely, art, photographs, images, animation, and videos, for use online and in online virtual worlds
Providing online marketplaces, namely, virtual reality marketplaces, for buyers and sellers of goods and services
Provision of an online marketplace for buyers and sellers of downloadable digital {indicate type of downloadable digital goods, e.g., art images, music, video clips, etc.} authenticated by non-fungible tokens (NFTs)
Provision of an online marketplace for buyers and sellers of downloadable digital art images authenticated by non-fungible tokens (NFTs)
Retail store services featuring virtual goods, namely, art, photographs, images, animation, and videos, for use online and in online virtual worlds
Retail store services featuring virtual goods, namely, clothing, outerwear, headwear, and footwear, for use online and in online virtual world
Retail store services featuring virtual goods, namely, cosmetics, perfumery, and jewelry, for use online and in online virtual worlds
Retail store services featuring virtual goods, namely, handbags, wallets, and luggage, for use online and in online virtual worlds

Services for provision of virtual content

In some instances, Class 41 may also be appropriate for services with respect to the provision of virtual content. For example, the Canadian Trademarks Office has pre-approved the following language, generally in Class 41:

Entertainment services, namely, providing on-line, non- downloadable virtual art works, photographs, images, animation, and videos for use in virtual environments
Entertainment services, namely, providing on-line, non- downloadable virtual clothing, outerwear, headwear, and footwear, for use in virtual environments
Entertainment services, namely, providing on-line, non- downloadable virtual cosmetics, perfumery, and jewelry for use in virtual environments
Entertainment services, namely, providing on-line, non- downloadable virtual handbags, wallets, and luggage, for use in virtual environments
Entertainment services, namely, providing on-line, non-downloadable virtual content featuring cosmetics, perfumery, and jewelry, for use online and in virtual environments
Entertainment services, namely, providing on-line, non-downloadable virtual content featuring art works, photographs, images, animation, and videos, for use online and in virtual environments
Entertainment services, namely, providing on-line, non-downloadable virtual content featuring clothing, outerwear, headwear, and footwear, for use online and in virtual environments
Entertainment services, namely, providing on-line, non-downloadable virtual content featuring cosmetics, perfumery, and jewelry, for use online and in virtual environments
Entertainment services, namely, providing on-line, non-downloadable virtual content featuring handbags, wallets, and luggage, for use online and in virtual environments
Providing information on-line relating to virtual vehicle customization for hobby or entertainment purposes
Providing online virtual reality computer games for use on mobile phones, smart phones, cellular phones, personal computers, tablet computers, notebook computers
Virtual reality game services provided on-line from a computer network

United States

Goods and services in the United States Trademarks Office

The United States Trademarks Office similarly has approved language with respect to NFTs, virtual goods and related services. Examples include:

Goods

Virtual Goods and Cryptoassets including NFTs

Downloadable audio and video recordings featuring {specify subject matter, e.g., sports highlights, movie clips, memes, etc.} authenticated by non-fungible tokens (NFTs)
Downloadable audio recordings featuring {specify subject matter, e.g., music, poetry, etc.} authenticated by non-fungible tokens (NFTs)
Downloadable computer game software featuring virtual goods, namely, {indicate goods, e.g., furniture, jewelry, sunglasses, etc.} for use in online virtual worlds
Downloadable computer software for accessing, reading, and tracking information in the field of {indicate subject matter of information, e.g., patient medical records, financial transactions, etc.} on a blockchain
Downloadable computer software for use as a digital wallet
Downloadable image files containing {indicate subject matter or field, e.g., trading cards, artwork, memes, sneakers, etc.} authenticated by non-fungible tokens (NFTs)
Downloadable multimedia file containing artwork relating to {indicate field or subject matter of file} authenticated by non-fungible tokens (NFTs)
Downloadable multimedia file containing artwork, text, audio, and video relating to {indicate field or subject matter of file} authenticated by non-fungible tokens (NFTs)
Downloadable multimedia file containing audio relating to {indicate field or subject matter of file} authenticated by non-fungible tokens (NFTs)
Downloadable multimedia file containing text relating to {indicate field or subject matter of file} authenticated by non-fungible tokens (NFTs)
Downloadable multimedia file containing video relating to {indicate field or subject matter of file} authenticated by non-fungible tokens (NFTs)
Downloadable music files authenticated by non-fungible tokens (NFTs)
Downloadable software for generating cryptographic keys for receiving and spending crypto assets
Downloadable video recordings featuring {specify subject matter, e.g., sports highlights, movie clips, memes, etc.} authenticated by non-fungible tokens (NFTs)
Downloadable virtual goods, namely, computer programs featuring {specify nature, type, e.g., articles of clothing} for use in online virtual worlds

Of course, other classes should not be overlooked when the good may primarily fulfill one purpose with the incorporation of a digital sensor that could have use in the metaverse, for example, for goods related to scanned objects to be incorporated into the metaverse with metadata and use of Internet of Things (IoT) sensors. For example, the United States Trademarks Office provides for various goods incorporating digital sensors:

Compression sleeves incorporating digital sensors (G, Class 10)
Socks incorporating digital sensors (G, Class 25)
T-shirts incorporating digital sensors (G, Class 25)
Yoga pants incorporating digital sensors (G, Class 25)

Services

Metaverse-related retail store services in Class 35

Online retail store services rendered in a virtual environment featuring physical goods, namely, {specify type, e.g., furniture, jewelry, sunglasses, etc.}
Online retail store services featuring virtual goods, namely, {specify type, e.g., furniture, jewelry, sunglasses, etc.} for use in online virtual worlds
Online retail store services featuring digital goods, namely, {specify type, e.g., furniture, jewelry, sunglasses, etc.} for use in online virtual worlds
Online retail store services rendered in a virtual environment featuring virtual goods, namely, {specify type, e.g., furniture, jewelry, sunglasses, etc.}
Online retail store services rendered in a virtual environment featuring physical goods and virtual goods, namely, {specify type, e.g., furniture, jewelry, sunglasses, etc.}

Some of the virtual services descriptions listed in the Acceptable Identification of Goods and Services Manual (ID Manual) of the United States Trademarks Office are not currently included in the Canadian Manual of Goods and Services. Some examples are:

Authentication of data in the field of {indicate field, e.g., works of art, financial transactions, medical records, etc.} using blockchain technology (S, Class 42)
Computer services, namely, creating an on-line virtual environment for {indicate purpose, e.g., off-track betting, trading stocks, etc.} (S, Class 42)
Electronic storage of crypto tokens for others (S, Class 42)
Entertainment services, namely, providing virtual environments in which users can interact for recreational, leisure or entertainment purposes (S, Class 41)
Financial exchange of crypto assets (S, Class 36)
Organizing, arranging, and conducting virtual {specify type of sport, e.g., triathlon, cycling, running, etc.} events (S, Class 41)
Providing an on-line forum for trading virtual real estate (S, Class 38)
Providing on-line non-downloadable software for generating cryptographic keys for receiving and spending crypto assets (S, Class 42)
Providing temporary use of on-line non-downloadable computer software for use as a digital wallet (S, Class 42)
Providing temporary use of on-line non-downloadable software for accessing, reading, and tracking information in the field of {indicate subject matter of information, e.g., patient medical records, financial transactions, etc.} on a blockchain (S, Class 42)
Provision of an online marketplace for buyers and sellers of downloadable digital {indicate type of downloadable digital goods, e.g., art images, music, video clips, etc.} authenticated by non-fungible tokens (NFTs) (S, Class 35)
Provision of an online marketplace for buyers and sellers of downloadable digital art images authenticated by non-fungible tokens (NFTs) (S, Class 35)
User authentication services using blockchain technology for {specify the application of the services, e.g., cryptocurrency transactions, online software applications, etc.} (S, Class 42)

UAE

Building on the 2017 launch of its Strategy for the Fourth Industrial Revolution (4IR), the UAE recently introduced a National Digital Economy Strategy. This announcement is in line with its generally supportive approach to crypto-related activities of the region. With a desire to establish itself as a leader in the metaverse economy in the region and among the top 10 cities globally, Dubai has created the Virtual Assets Regulatory Authority (VARA), which provides a legal framework for digital assets such as NFTs.

The region has also taken concrete steps in the digital economy with the UAE Ministry of Economy announcing the installation of official departments in the metaverse, allowing users to access services entirely virtually. Once launched, metaverse users will be able to visit the virtual office rather than the existing physical offices to provide signatures on legally binding documents. In October 2022, the Government of Dubai's Legal Affairs Department announced that from early 2023, it will move its "Continuing Legal Professional Development" training for Dubai-based legal consultants into the metaverse. The intention is to run interactive CLPD sessions in the metaverse, using AI to identify areas of further development.

These actions are in addition to other digital friendly initiatives including: the introduction of the world's first virtual megacity in 2021 – Metaverse Dubai – based on the city's real topography and geography; hosting of the world's first economic summit in the metaverse – Investopia; launch of the Middle East's first metaverse incubator – MetaIncubator among others. The UAE Trademarks Office has not, to date, issued any formal practice direction or notice in relation to goods and services relating to the metaverse, crypto assets or the like. However, the UAE officials have accepted applications in these areas.

Goods and services in the UAE Trademarks Office

We have seen trademark metaverse-related applications accepted for the following terms segmented by the following Classes:

Class 9:

computer software for use as a virtual asset wallet
computer software for use as a digital wallet
computer software for use as an electronic wallet
downloadable cryptographic keys for managing, receiving and spending virtual currencies, virtual assets, tokens, and cryptocurrencies
downloadable computer software for managing transactions relating to virtual currencies, virtual assets, cryptocurrencies, tokens and non-fungible tokens
virtual and digital goods for use online and in virtual worlds
virtual and digital interactive representations of buildings and locations for use in virtual worlds and virtual environments
downloadable virtual goods featuring articles of [clothing, footwear, headgear, toys, games, playthings, etc.]
downloadable virtual avatars for use in virtual worlds and virtual environments

Class 35:

membership club services, namely, providing information to members in the field of virtual currencies, cryptocurrencies, virtual assets, tokens and non-fungible tokens;
provision of an online marketplace for buyers and sellers of virtual goods and services;
conducting interactive virtual auctions;
online retail services for non-fungible tokens and virtual assets;
providing an online virtual environment for trading virtual art, virtual art tokens, tokens and non-fungible tokens

Class 36:

virtual currency services;
crypto currency trading services;
virtual assets trading services;
virtual currency exchange services;
crypto currency exchange services;
virtual assets exchange services;
issuing virtual tokens of value;
issuing tokens of value as part of a customer membership scheme;
providing a virtual currency for use by members of an online community via a global computer network;
electronic transfer of crypto assets;
electronic transfer of virtual assets;
electronic funds provided via blockchain technology;
e-wallet payment services;
investment of virtual assets;
virtual real estate services;
real estate services provided in a virtual world or virtual environment;
real estate affairs provided in a virtual world or virtual environment;
rental of residential, commercial and industrial premises online in a virtual world or virtual environment

Class 41:

entertainment services provided in a virtual world;
educational services in the field of cryptocurrencies, virtual assets, tokens, and non-fungible tokens;
art gallery and art exhibition services provided in a virtual world;
organising community events in the field of cryptocurrencies, virtual assets, tokens, and non-fungible tokens;
virtual reality game services;
provision of non-downloadable virtual and digital goods for use online and in virtual worlds;
provision of non-downloadable virtual and digital interactive representations of buildings and locations for use in virtual worlds and virtual environments;
provision of non-downloadable downloadable virtual goods featuring articles of [clothing, footwear, headgear, toys, games, playthings, etc....]
provision of non-downloadable virtual avatars for use in virtual worlds and virtual environments;
entertainment services, namely, providing online, non-downloadable products and services for use in virtual worlds and virtual environments

Class 42:

providing a secured access, members only website, that gives members the ability acquire non-fungible tokens;
designing artwork for use as non-fungible tokens;
user authentication services using blockchain technology;
blockchain as a service (BaaS);
data storage via blockchain; data authentication via blockchain;
authenticating non-fungible tokens;
research in the field of blockchain technology;
research in the field of virtual assets, virtual currencies, cryptocurrencies and non-fungible tokens;
hosting an online multimedia virtual world and virtual environment in which users can interact

EU and UK

Guidance provided by the European Office

The EUIPO stated in a guidance document published on its website, that virtual goods should be registered in Class 9 because they are treated as digital content or images. The Office, however, specified that the mere term "virtual goods" on its own lacks clarity and precision and must therefore "be further specified by stating the content to which the virtual goods relate (e.g. downloadable virtual goods, namely, virtual clothing)".

Similarly, the term non fungible tokens on its own is not acceptable. The specific type of digital item authenticated by the NFT must be included. This is because NTFs are treated as unique digital certificates registered in a blockchain, which authenticate digital items but are distinct from those digital items.

Furthermore, "services relating to virtual goods and NFTs will be classified in line with the established principles of classification for services".

The UK approach

Currently, the UK has no official guidance, although this article will be updated should such guidance issue. While it is possible the UK will follow the EU, the approach in the UK remains to be seen.

Singapore

The Intellectual Property Office of Singapore ("IPOS") has similarly approved language with respect to NFTs, virtual goods and related services, although no formal practice directions for the same have been issued. Key classes for metaverse-related marks include Classes 9, 35 and 41, amongst others.

We provide several examples below that have been accepted by IPOS or can be found in the IPOS database of accepted specifications segmented by Class.

Class 9

Downloadable virtual goods
Downloadable virtual wallets
Downloadable cryptocurrency wallets
Downloadable software for metaverses
Downloadable computer software for managing crypto asset transactions using blockchain technology
Downloadable software for blockchain-based inventory management
Downloadable cryptographic keys for receiving and spending crypto assets
Downloadable cryptographic keys for receiving and spending cryptocurrency
Downloadable audio files authenticated by non-fungible tokens [NFTs]
Downloadable digital files authenticated by non-fungible tokens [NFTs]
Downloadable music files authenticated by non-fungible tokens [NFTs]
Downloadable video files authenticated by non-fungible tokens [NFTs]
Virtual reality software

Class 35

Retail store services featuring virtual goods
Online retail store services featuring virtual merchandise

Class 36

Electronic transfer of virtual currencies
Electronic transfer of crypto assets
Electronic funds transfer provided via blockchain technology
Financial exchange of virtual currency
Financial exchange of crypto assets
Virtual wallet payment services
Cryptocurrency asset management
Cryptocurrency exchange services
Cryptocurrency investment advisory services
Cryptocurrency investment services

Class 41

Entertainment services, namely, providing on-line, non-downloadable virtual clothing for use in virtual environments
Virtual reality game services provided online from a computer network
Virtual reality arcade services
Provisions of exhibitions via virtual reality
Virtual reality entertainment services

Class 42

Cryptocurrency mining
Cryptomining
Mining of crypto assets
User authentication services using blockchain technology

"Read the original article on GowlingWLG.com".

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Worldwide: Securing Trademark Protection In The Metaverse