Trademark in the metaverse: Pre-approved metaverse-related goods and services descriptions in Canada, the U.S., the EU, the UAE, and Singapore – Lexology
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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), 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:
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:
Electronic transfer of cryptoassets
The electronic transfer of these cryptoassets can fall within Class 36:
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.
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:
Unsurprisingly, the sale of these goods may fall into Class 35:
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.
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:
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:
Class 35:
Class 36:
Class 41:
Class 42:
EU
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”.
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
Class 35
Class 36
Class 41
Class 42
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