trademarks

Extending Trademark Protections to the Metaverse

May 10, 2022
Data, Internet, New Technology, Trademark Law

Alex O’Connor, MJLST Staffer

After a 2020 bankruptcy and steadily decreasing revenue that the company attributes to the Coronavirus pandemic, Chuck E. Cheese is making the transition to a pandemic-proof virtual world. Restaurant and arcade center Chuck E. Cheese is hoping to revitalize its business model by entering the metaverse. In February, Chuck E. Cheese filed two intent to use trademark filings with the USPTO. The trademarks were filed under the names “CHUCK E. VERSE” and “CHUCK E. CHEESE METAVERSE”. 

Under Section 1 of the Lanham Act, the two most common types of applications for registration of a mark on the Principal Register are (1) a use based application for which the applicant must have used the mark in commerce and (2) an “intent to use” (ITU) based application for which the applicant must possess a bona fide intent to use the mark in trade in the near future. Chuck E. Cheese has filed an ITU application for its two marks.

The metaverse is a still-developing virtual and immersive world that will be inhabited by digital representations of people, places, and things. Its appeal lies in the possibility of living a parallel, virtual life. The pandemic has provoked a wave of investment into virtual technologies, and brands are hurrying to extend protection to virtual renditions of their marks by registering specifically for the metaverse. A series of lawsuits related to alleged infringing use of registered marks via still developing technology has spooked mark holders into taking preemptive action. In the face of this uncertainty, the USPTO could provide mark holders with a measure of predictability by extending analogue protections of marks used in commerce to substantially similar virtual renditions. 

Most notably, Hermes International S.A. sued the artist Mason Rothschild for both infringement and dilution for the use of the term “METABIRKINS” in his collection of Non-Fungible Tokens (NFTs). Hermes alleges that the NFTs are confusing customers about the source of the digital artwork and diluting the distinctive quality of Hermes’ popular line of handbags. The argument continues that the term “META” is merely a generic term that simply means “BIRKINS in the metaverse,” and Rothschild’s use of the mark constitutes trading on Hermes’ reputation as a brand.  

Many companies and individuals are rushing to the USPTO to register trademarks for their brands to use in virtual reality. Household names such as McDonalds (“MCCAFE” for a virtual restaurant featuring actual and virtual goods), Panera Bread (“PANERAVERSE” for virtual food and beverage items), and others have recently filed applications for registration with the USPTO for virtual marks. The rush of filings signals a recognition among companies that the digital marketplace presents countless opportunities for them to expand their brand awareness, or, if they’re not careful, for trademark copycats to trade on their hard-earned good will among consumers.

Luckily for Chuck E. Cheese and other companies that seek to extend their brands into the metaverse, trademark protection in the metaverse is governed by the same set of rules governing regular analogue trademark protection. That is, the mark the company is seeking to protect must be distinctive, it must be used in commerce, and it must not be covered by a statutory bar to protection. For example, if a mark’s exclusive use by one firm would leave other firms at a significant non-reputation related disadvantage, the mark is said to be functional, and it can’t be protected. The metaverse does not present any additional obstacles to trademark protection, and so as long as Chuck E. Cheese eventually uses its two marks,it will enjoy their exclusive use among consumers in the metaverse. 

However, the relationship between new virtual marks and analogue marks is a subject of some uncertainty. Most notably, should a mark find broad success and achieve fame in the metaverse, would that virtual fame confer fame in the real world? What will trademark expansion into the metaverse mean for licensing agreements? Clarification from the USPTO could help put mark holders at ease as they venture into the virtual market. 

Additionally, trademarks in the metaverse present another venue in which trademark trolls can attempt to register an already well known mark with no actual intent to use it-—although the requirement under U.S. law that mark holders either use or possess a bona fide intent to use the mark can help mitigate this problem. Finally, observers contend that the expansion of commerce into the virtual marketplace will present opportunities for copycats to exploit marks. Already, third parties are seeking to register marks for virtual renditions of existing brands. In response, trademark lawyers are encouraging their clients to register their virtual marks as quickly as possible to head off any potential copycat users. The USPTO could ensure brands’ security by providing more robust protections to virtual trademarks based on a substantially similar, already registered analogue trademark.

Countdown Sochi ’14: Will the USOC Avoid Repeat of Ravelry Stitch?

October 4, 2013
Intellectual Property

by Comi Sharif, UMN Law Student, MJLST Staff
Next month, the United States Olympic Committee (USOC) will launch its “Road to Sochi Tour” to count down the final 100 days leading up to the 2014 Winter Olympics. As the games draw near, we are likely to see a rapid increase in the amount of Olympic advertisements and related promotions. From cereal box covers to credit card commercials narrated by Morgan Freeman, materials will flood the market for the weeks leading up to the competition, to the point where one cannot help but get caught up in “Olympic Fever“. The Olympics bring the joy of cheering on our fellow countrymen (and countrywomen) regardless of whether we have ever heard of them or their sport, let alone watched on television before the Games. Though American athletes put in countless hours of commitment in preparation to represent our country, all of it would be for naught without the efforts of the USOC.

Formed in 1894, the USOC is driven by its mission to support U.S. Olympic and Paralympic competitive excellence while exhibiting the values of the Olympic Movement. The key element of this responsibility is generating and allocating revenue. Though the USOC is federally sanctioned under the Ted Stevens Olympic and Amateur Sports Act (ASA), the non-profit corporation does not receive federal financial support. For this reason, the USOC relies heavily on sponsorships to fund its programs.

Due to the importance of sponsorships, the USOC has a major incentive to maintain its positive brand along with the reputation of the Olympics as a whole. For this reason, the ASA also grants the USOC exclusive rights to use a number of words and marks in a commercial or athletic context, including the name “United States Olympic Committee,” the International Olympic Committee symbol (consisting of 5 interlocking rings), and the words “Olympic,” and “Olympiad.” Congress has even granted enhanced protections and enforcement powers to the USOC in some circumstances. As part of these rights, the USOC can authorize the use of the protected words and marks by sponsors as well as bring legal action against violators under the Lanham Act. The rationale is that the more control over Olympic intellectual property the USOC holds, the further it can maintain and promote its good name. This, in turn, makes the exclusive right to use Olympic words and marks more valuable to sponsors, which generates more capital that can be used for the U.S. Olympic program.

The scope of the exclusive rights under the ASA has often been a source of controversy, however. Though many alleged infringers discontinue their use upon the receipt of a USOC-issued cease and desist letter, a number of disputes have been brought to court to challenge the scope of the USOC’s protection and enforcement rights under the ASA.

Author Marcella David discusses one case in particular in Trademark Unraveled: The U.S. Olympic Committee Versus Knitters of the World (Minnesota Journal of Law, Science & Technology, Vol. 14.2), involving alleged infringement by Ravelry.com in its use of the word “Ravelympics.” Rather than sending a conventional cease and desist letter, the USOC informed Ravelry.com that their use was not only infringing on the USOC’s trademarks, but that their use tends to “denigrate the true nature of the Olympic Games.” Instead of convincing Ravelry.com to switch the name of its event, the letter sparked outrage throughout the online community. Ironically, in an attempt to protect its reputation, the USOC managed to do the exact opposite shortly before the Olympics were set to begin. In her article, David assesses the USOC’s claims of infringement against Ravelry.com while noting areas in need of improvement in the current legal framework of trademark infringement enforcement.

As intellectual property infringement becomes increasingly difficult to prevent and enforce against in the age of the Internet, owners need to be creative and proactive to limit unauthorized use. In regards to the USOC, this means not going too far in enforcing rights, however. So until there is more clarity as to the extent of the USOC’s protection under the ASA, we may be in store for a repeat of the Ravelry fiasco in the coming months. Let the countdown begin!

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