No Metaverse trademark registration? No problem, says the USPTO
Metaverse-focused trademark applications for Gucci and Prada that were filed by unaffiliated persons – for use on “downloadable virtual goods, namely, computer programs containing footwear, clothing”, etc. ., “retail store services offering [such] virtual goods”, and “entertainment services, namely, providing online non-downloadable virtual shoes, clothing”, etc. – amid a boom in interest in NFTs and the metaverse are without surprise garnering backlash from the US Patent and Trademark Office. In respective Office actions issued this week, the Trademark Office’s examining lawyers initially refused to register the Gucci and Prada word marks on a number of grounds. The most obvious: a risk of confusion between the marks applied for and the valid marks held by Gucci and Prada.
The Bureau actions the USPTO sent to Fenesha Holmes and Reath Mohammed, the people who filed for the Prada and Gucci trademarks in November 2021, are not unexpected. As TFL exclusively reported last year, the apps “probably won’t pose any real problems for [Gucci and Prada] in the United States, since trademark rights are assigned based on the actual use of a trademark. It’s also worth noting that brands like Gucci, for example – which has partnered with Roblox and put its famous logos on a virtual experience and corresponding products – are actively accumulating trademark rights instead of registering their own trademarks. specific to the metaverse by virtue of using their marks in these classes of products/services. And those rights would override those asserted by unaffiliated third parties.
Nevertheless, there are some interesting aspects of the Office’s actions in response to squatter applications, namely, the examiners’ discussions of the similarity of marks in the applications filed by Holmes and Mohammed with those held by Gucci and Prada – in particular, the link between the goods/services in question.
Goods and services of the “real” world compared to the virtual world
By laying out some relevant points on the likelihood of confusion front (and then examining DuPont’s factors to assess the potential for consumer confusion), the USPTO examiners assert that Section 2(d) of the Trademark law “prohibits the registration of a trademark application that is so similar to a registered trademark that it is likely that consumers would be confused, confused or deceived as to the commercial source of the parties’ goods and/or services.
The Examining Lawyers’ discussions of goods and services are compelling, for although Gucci and Prada have consistently used – and maintain a long list of trademark registrations for – their names, none of these registrations specify virtual goods, services virtual goods retail and/or virtual goods-based entertainment services among the goods/services. (No, that doesn’t really matter given that Gucci and Prada are actively using their brands on NFTs and/or in the metaverse, and have therefore obtained rights through such use, but wait.)
In light of the lack of Metaverse/NFT-specific trademark registrations for their word marks, USPTO examiners are looking at the classes of goods/services that are listed in their existing records. For Gucci, the Examiner states that two of its registrations for the Gucci name in Class 35 “use broad language to describe retail store services featuring clothing, jewelry and handbags.” This language “presumably encompasses all services of the type described, including the narrow[er] retail store services featuring virtual goods in these categories” listed in Holmes’ applicationasserts the Examiner, noting that “the parties’ services have no restrictions as to nature, type, trade channels or categories of purchasers” and are therefore “presumed to travel through the same trade channels to the same class buyers.”
In this context, the Examiner finds that the services listed in Holmes’ application and those listed in Gucci’s registrations “are legally identical”. This finding is important, as it would apparently apply even if Gucci did not actually operate in the virtual world and only had its traditional “retail store services” records to rely on. In other words (and as we already suspected), trademark rights/corporate registrations for “real world” goods/services apply to the metaverse.
The Examiner emphasizes this point, stating that the very nature of the goods in issue – both “virtual goods, such as shoes, clothing, headgear, eyewear, handbags, jewelry and watches” and Gucci’s “physical shoes”, clothing, headwear, eyewear, handbags, jewelry and timepieces” – are the kind that “can come from a single source, under a single brand”, which pleads in favor of a link with the hypothetical Gucci virtual brand of the plaintiff. products and those offered by the fashion company headed by Alessandro Michele. (I say “hypothetical” because none of the applicants make or claim actual use of the mark in the metaverse/on virtual goods in their intent-to-use applications.)
And yet, the link between the products (and the likelihood of confusion) is further reinforced, according to the examiner, since “luxury brands, including [Gucci]sell virtual versions of their physical goods in virtual worlds.
“In this case, since the marks are identical or substantially identical and the goods and services are closely related, consumers encountering the plaintiff’s goods and services would reasonably assume that they are produced or manufactured by the same source as [Gucci’s] goods and services,” says the examining lawyer. Accordingly, “because consumers would be likely to assume a connection between the parties, the marks are confusingly similar”, and registration is refused.
In a separate Office action, an examining attorney denied Mohammed’s Prada trademark on similar grounds, primarily stating that Prada maintains a series of registrations for “PRADA formative trademarks for a variety of real estate that are consistent with [Mohammed’s hypothetical] virtual goods. At the same time, the USPTO examiner finds that the goods/services listed in Mohammed’s application “are related to [Prada’s] registered goods and/or services” – including physical apparel and accessories, and related retail services – because they are “merely virtual versions of registered products”.
Additionally, the Examiner argues that “the same suppliers of actual fashion products often supply virtual fashion products, including the declarer”, and therefore, “Mohammed’s goods and/or services are closely related to the goods and/or or registered services”.
In addition to rejecting applications on grounds of likelihood of confusion, examiners point to a number of other grounds for refusal, including Section 2(a) of the Trade Marks Act, which prohibits the registration of trade marks which may to “falsely suggest” a link with an institution. Although Holmes and Mohammed are “not related to the goods and/or services” provided by Gucci and Prada, the fashion brands are “so well known that consumers would assume a connection” when none exists. Examiners also cite prior pending applications for “Gucci” and “Prada” that were filed by trademark attorneys. (Interestingly, none of the earlier trademark applications mention virtual goods/services.)
Regarding the Gucci application (but oddly enough, not Prada’s), the Examiner said there is also a potential conflict given that Gucci is “mostly just a family name”.
While applicants who receive Office Actions have the opportunity to respond to explicitly address each denial and/or requirement and give their applications the opportunity to potentially advance through the registration process, this round is almost certainly the last we hear about these nominations. In all likelihood, the applications will not provide answers to the actions of the Office, which will lead to the rejection of the applications, since it is essentially impossible to imagine arguments and/or evidence that they could provide to overcome the different USPTO grounds for denial.