The metaverse: Why artists and music labels should re-consider their trademark filing strategy.

18 October 2022

The metaverse brings relevant new possibilities for music artists to get in touch with their fans but there are also great financial opportunities.

The presence of brands in the metaverse is not a future fact. Brands are already in the metaverse. In these digital spaces it is possible to sell goods and to provide digital services. So, the potential is certainly there and some artists are already cashing in on this potential. Justin Bieber recently held a virtual concert in the metaverse and he is not alone. Post Malone did a gig in the Facebook metaverse Horizon Words and more and more artists take stage in Decentraland, Sandbox and other virtual worlds.

For brand owners (and therefore also artists!), protecting their brands in relation to the metaverse will be critical and will require a legal strategy.

If you are planning on selling branded virtual goods and or giving performances in the metaverse get in touch with us to see whether additional trademark filings are needed. 

Why?

Trademark protection for virtual goods and recent guidelines from trademark offices already bring quite some knowledge as to how protecting your brand for these digital worlds, which is different from trademark protection in place for physical products. Knijff Trademark Attorneys also already assisted quite some brands, preparing them for the metaverse.

What is the big deal here from a trademark perspective?

When you register a trademark you do so in relation to specific goods and services and these goods and services “fall” in a certain “class”.

Sneakers and clothing for example are registered in class 25 and in the past many artists protected their trademark in this class in order to be able to get licensing deals or to be in a position to act against counterfeit products. 

But how do you apply to protect your brand or name for a digital sneaker or digital make up? And how for a digital concert?

Schermafbeelding 2022-10-17 om 09.41.30

Digital clothing is software, not clothing!

As said class 25 is the “normal” class to register regular clothing products. A completely different class however, namely class 09, is being applied to “downloadable virtual goods” in “virtual online worlds”. 

This would mean that the traditional class 25 frequently used by artists in their trademark filings will likely not cover downloadable clothing and shoes. Regarding the nature of the goods and services, it will be evident that digital goods do not have the same nature as the corresponding non-digital goods. Digital clothing is “software”. 

Do not give squatters room. 

Also it is not a current business practice yet that producers of shoes are also almost certainly offering downloadable goods as well and that therefore these products are similar from a legal perspective.

The fact that, for now, traditional trademark offices will not likely see these physical goods as being similar to the digital versions might however bring room for trademark squatters!

This means that the holder of trademark covering clothing (class 25), might, in principle, not prevent the registration and use of an identical or similar trademark identifying the corresponding digital goods and services in the metaverse.

Conclusion

Above mentioned realities might soon change as it will become more common for brands to explore the metaverse but for this moment we suggests artists that are already active or have plans to become active in the metaverse to contact us, to discuss their plans and just like to other brands have done already implement a legal strategy to tackle the trademark issues that come with the metaverse. We are happy to assist on developing such a strategy. 

We will be at ADE

In case you would like to discuss the above or just share a drink during Amsterdam Dance Event do not hesitate to contact us. We will be present there. 

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