NFTs + Metaverse Archives - Michael E. Kondoudis

How to Trademark a Product Name: The ULTIMATE GUIDE

June 27, 2022 by Michael Kondoudis

By Michael Kondoudis, Small Business Trademark Attorney

This is our ultimate guide to how to trademark a product name.

Most business owners and entrepreneurs know the importance of product names. But how do you legally protect the name of product? That’s where trademarks come in.

If you want to quickly:

Understand the basics of trademarking a product name
Learn why you need to trademark the name of your product
Discover the advantages of trademarking product names
Identify risks of not trademarking a product name
How to trademark the name of your product
Figure out when to trademark your product name
Start a plan to legally protect your product name

Then this guide is for you.

Let’s get started.

PART I: THE BASICS OF TRADEMARKS FOR PRODUCTS

In this section, we’ll go over the basics of trademarks and how they protect product names.

The best way to legally protect the name of a product is to trademark it. Trademarks protect names, including the names of products. With a trademark, you can legally protect the name used to identify your product. Trademarking your product name is official confirmation that you legally own it. Trademarking your product name will give you exclusive rights to use it and prevent others from using the same or similar name in your industry. Trademarking the name of your product is the best way to protect it.

What is a trademark?

A trademark is a distinctive word, symbol, or phrase that identifies products from one enterprise and distinguishes them from products from the competition. Trademarks protect names, especially the names of products. Buyers use trademarks to pick among brands of products.

Where do you get a trademark for your product name?

You get a product trademark from the U.S. Patent and Trademark Office (USPTO). To get a trademark for your product name, you need to apply to the USPTO and then navigate an examination process. Product trademarks are granted by the USPTO.

What kinds of product names can be trademarked?

The most common product trademarks are words (names), phrases, logos, and designs. Examples include abbreviations and unique names, like these:

PART II: WHY YOU NEED TO TRADEMARK THE NAMES OF YOUR PRODUCTS

In this section, we’ll explore the reasons why trademarking product names is so important, the advantages of trademarking a product name, the risks of not trademarking your product name.

Product names, like all trademarks, represent brands. They help customers find the products that they like and distinguish them from the competition. After all, your product name is how most customers will identify and remember your products. That’s why trademarking a name, including trademarking a product name, is so important and why you want to ensure that your product name is protected.

Top Six Reasons to Trademark a Product Name

Trademarking is a powerful tool to stop unauthorized use of your product name by copycats. Here are the top six reasons why:

1. Exclusivity. Trademarking your product name gives you the exclusive right to use it. Typically, only one business can use a product name in an industry, and it is usually the one that trademarks the product name first.

2. Legal Ownership. When you trademark a product name, no one else in your industry can register it, take it from you, and force you to rebrand. Here again, typically only one business can own a product name in an industry, and it is usually the one that trademarks the product name first.

3. Distinctiveness. A trademark for the name of your product helps distinguish your product from others on the market, which means that buyer loyalty for your high-quality product flows to you.

4. Cost-Savings over time. Trademarking your product name comes with important legal rights and presumptions that make enforcing your ownership rights less expensive if someone else tries to use your product name without permission.

5. Deterrence. When you trademark your product name, you can use the ® symbol with it. This can deter would-be copycats from trying to use your product name and can help you enforce your rights if someone uses your product name without permission.

6. Value. Having a registered trademark for your product name can also make it easier to sell or license it because potential buyers or licensees will know that they can use the name without the risk of infringing on someone else’s rights.

These are important advantages that can help a forward-thinking business.

Top Four Risks of Not Trademarking A Product Name

Choosing not to trademark a unique product name can have serious consequences. Here are the top four risks you face when you don’t trademark your product name.

1. Risk of a rebrand. If someone else trademarks your product name first, they’ll own the exclusive right to use it nationally. You’ll likely have to rebrand.

2. No exclusivity. Other businesses may use your product name and you won’t be able to stop them. As a result, imitators can benefit from your product’s goodwill, and you name may become worthless if too many companies use your name.

3. Lost sales due to confusion. Your business could suffer from a loss of revenue if customers confuse your product with one sold under a similar same.

4. Higher costs in the long run. You will likely have to spend more on monitoring and enforcing your product name trademark if it is not registered.

These are just some of the risks that you avoid when you trademark a product name.

Do you need help with your trademark?

PART III: HOW TO TRADEMARK A PRODUCT NAME

In this section, we’ll walk through the seven key steps to trademarking a product name.

Trademarking a name, especially a product name, involves federal law and legal procedures. Plus, every path to trademark registration is different. Still, every successful trademark for a product name involves the same seven steps.

Here are the seven essential steps to trademark a product name:

Choose a Unique and Protectable Brand Name for Your Product
Hire a Trademark Attorney for Your Product Name Trademark
Perform a Trademark Search for the Name of Your Product
Collect the Required Information and Develop Your Strategy
Prepare and File a Trademark Application with the USPTO
Navigate the Trademark Examination Process
Use the ® Trademark Symbol with Your Trademarked Product Name

1. Choose a unique and protectable brand name for your product

The key to getting a federal trademark is to start with a unique and protectable name (i.e., one that is trademarkable). This name should be able to distinguish your product from other products on the market. It should also be easy for customers to remember and pronounce.

Beware: Trademarks are not created equal. There are different kinds, and some are more effective and easier to protect than others.

The best trademarks are distinctive and memorable. They are strong because they excel at reflecting brands.

Some trademarks, however, are weak because they only describe aspects of products or services. Others are legally unprotectable, meaning anyone can use them.

How do you select a product name that is unique and protectable?

To ensure uniqueness, avoid names that are too similar to existing trademarks. (More about that in step #2)

To ensure protectability, the best option is to invent a word or phrase or get creative with spellings. (think: EXXON for oil or LYFT for ride-sharing). Another option, if you’re looking to trademark a product name, is to use words that are unrelated to your product. (think: Apple for computers or Amazon for online retail).

A third option if you’re looking to trademark a product name, is to brainstorm terms and phrases that suggest features, aspects, ingredients, or results of your product. (think: SNUGGLE for dryer sheets or IRISH SPRING for soap).

Lastly, if you’re looking to trademark a product name, try to avoid using descriptive or generic names or terms. These product names are difficult to trademark and tend not to be unique by their very nature. (think: “speedy” for delivery services or “sweet” for candy).

If you aren’t sure whether your mark is protectable (i.e., strong), you may be better off consulting an experienced trademark attorney. In any event, knowing the kinds of trademarks is very important. Otherwise, you could be wasting your time and money.

2. Hire a trademark attorney for your product trademark

Working with an experienced trademark attorney often makes the difference between success and failure when it comes to trademark registration. Studies of USPTO data show that applicants who work with a trademark attorney are 50% more likely to register their product names. That makes hiring a trademark attorney an excellent investment, regardless of whether you have previously trademarked a name or this is your first time going through the registration process to trademark a name.

Why?

Trademark attorneys are skilled in navigating the trademarking process, a federal legal proceeding involving an agency of the Federal government. Trademarking a product name is complex and requires a working knowledge of federal trademark law and the U.S. Patent and Trademark Office’s rules and regulations. Trademark lawyers understand the process, the pitfalls, and strategies that can help register your product name. Also, a trademark attorney can (1) help decide what to search for and (2) correctly interpret your search results. Trademarks do not need to be identical to conflict!

Every application starts a Federal legal proceeding involving countless U.S. Patent and Trademark Office rules and regulations. These rules and regulations impact EVERY aspect of a new Federal trademark application. And, you’ll be required to comply with them even if you don’t know or understand them.

Also, the application system uses trademark jargon and “terms of art,” which are words that have specific meanings only in the world of trademarks.

The USPTO recommends hiring a trademark attorney!

The U.S. Patent and Trademark Office recommends applicants work with trademark attorneys:

“we strongly encourage you to hire a U.S.-licensed attorney who specializes in trademark law to guide you throughout the application process.”

www.uspto.gov

There are several reasons why the U.S. Patent and Trademark Office (USPTO) recommends hiring a private attorney. First, an attorney is familiar with the USPTO’s procedures and can ensure that the application is filed correctly. Second, an attorney can help search for existing trademarks to avoid potential conflicts. Third, if there are any objections to the application, an attorney can represent the applicant in proceedings before the USPTO.

Beware: Not all trademark applications result in trademark registrations. The USPTO severely limits the changes you can make to an application after it is filed. So, mistakes during submission can quickly sink an application.

3. Perform a trademark search for the name of your product.

Before you can trademark your product name, you need to ensure that it’s not already been trademarked by another business. You can do this by conducting a trademark search for your brand name. This search will help you find out if any similar or identical trademarks are already registered.

This is a crucial step in the trademark registration process.

Why?

First, you want to make sure that your trademark is not already in use by someone else. Second, searching through existing trademarks can give you a better understanding of what is already out there and help you develop a more unique and original trademark for your business. Finally, if you do not search for similar trademarks before filing your application, you risk having your application denied or your trademark being declared invalid.

Additionally, if you have already started using your trademark in commerce, it is important to search to make sure that you are not infringing on someone else’s intellectual property. If you infringe, you could face legal action and be forced to stop using your trademark.

THE USPTO’S TESS SYSTEM

The objective here is to ensure that your product name is not similar or easily confused with someone else’s mark. This, in turn, can help you avoid any potential legal issues down the road and help you to ensure that your trademark is protectable and unique.

Beware: These searches aren’t as straightforward as inputting your product name and hitting search. Exact and similar trademarks used by other businesses are relevant to the Federal registration of your trademark. So, too, are misspellings, similar-sounding words and spellings, and foreign translations.

For all of these reasons (and others), it’s usually best to have an attorney run your trademark search.

4. Collect Information and Decide on a Trademarking Strategy

The preparation of a new trademark application begins by making some tactical decisions about the protection for which you will want to apply.

When you apply for a federal registration for your product name, you start a federal legal proceeding – and it can get complex in a hurry. The Federal trademarking process involves making dozens of legal decisions and judgment calls. Plus, these decisions and judgment calls are interrelated, and some wrong choices can sink your application from the start – without you even knowing it. So, the most successful applicants start the application process with a strategy.

For starters, you’ll need to decide:

what is the best format for your mark – is a composite mark better than standard characters? Will you need a “drawing”?;
which products/services you should include in your application and which ones should be excluded; and
what is the correct filing basis for their application?

If you don’t understand the legal consequences of each of these options, you’re very likely to get one or more of them wrong, which will impact your brand protection.

Also, every application must be filed in the name of the owner of the mark. The owner may be an individual, a corporation, a partnership, or an LLC. The right choice depends on several factors. If you get this wrong, you’ll need to refile the application and start again.

Further, you’ll also be required to swear to the truth of specific statements about the choices in your application. If you get any of them wrong, your application may be unenforceable.

These are just some of the reasons why DIY applications are 50% less likely to succeed at the USPTO.

5. File a Trademark Application for Your Product Name

After you’ve had a trademark search performed and are confident that your product name is available, the next step is to prepare and file a trademark application with the USPTO.

Note: You will need to verify your identity and have a USPTO.gov account.

You will need to provide the USPTO with precise information, including:

The legal owner and user of the product name
The legal use basis for your trademark application
The products and services with which the product name is used (or will be used)
Proper legal evidence of your use of the product name (not every use qualifies)

Mistakes in this step are among the top reasons that the USPTO rejects trademark applications. Also, the USPTO severely limits changes to applications after they are filed. As a result, many mistakes cannot be corrected – even some spelling errors.

6. Navigate the application process at the USPTO

The USPTO will review your trademark application to make sure it meets all the requirements for registration. They will also examine your product name to determine if it is similar or could be confused with an existing trademark. This examination process can take several months, so it is important to ensure that there are no mistakes in your application.

Beware: The USPTO has, for many years, a perpetual backlog of applications. This means that it will be several months before a trademark examiner looks at your trademark and examines it. The current backlog is over six months, and the entire trademarking process takes about 12 months on average to complete.

Working with a trademark attorney can help ensure that your application is complete and correctly filed, to avoid further delays. – mention strategic calls here

7. Use the ® Trademark Symbol with Your Trademarked Product Name

Using a trademark symbol is an important signal to consumers (and the competition) that your product name represents your brand.

There are three trademark symbols. They are:

the letters TM
the letters SM, and
the letter R in a circle — ®

The letters TM are a trademark symbol for unregistered trademarks (marks for products like shoes or computers).

The letters SM are a trademark symbol for unregistered service marks (marks for services like legal services).

The ® is a trademark symbol for Federal trademarks (trademarks or service marks registered with the U.S. Patent and Trademark Office). The ® trademark symbol is reserved for federal trademarks only – after you have a federal trademark registration.

PART IV: WHEN TO TRADEMARK A PRODUCT NAME

In this section, we’ll explore when you should trademark your product name. Waiting too long can have serious consequences.

Most authorities agree that in most situations, it is best to file new trademark applications early – even before a business begins selling or marketing a product.

Why?

Firstly, the trademarking process can more than 12 months in most cases. So, the sooner you start, the sooner you can legally own your product name. Plus, starting early will reduce the time your product in on the market without full trademark protection.

Secondly, starting early maximizes the chances that you will own the trademark for your product name. If a competitor files for the same or a similar name, the U.S Patent and Trademark Office may reject your trademarks. Thousands of new applications are filed every day, so waiting for as little as a few weeks can become a risk.

If you have a unique product name, you should file for a product trademark as soon as possible. Filing for your trademark is the easiest way to avoid costly legal battles over ownership of your product name.

So, the answers to the questions “when should I trademark my product name” or “when should I trademark the name of my product” are the same. You should trademark a product name as soon as possible.

PART V: HOW TO PROTECT THE NAME OF A PRODUCT

Trademarks protect product names and are important. But, trademarks are just part of the plan. Here’s the rest.

A unique product name is a valuable asset. Think about it. There is something about CHICKEN MCNUGGETS, a CHEVY CORVETTE, or a SONY PS5, for example. Product names matter. Here’s how to protect them.

1. Register your product trademarks: Trademarking product names leads to legal ownership and brand security. Plus, a trademark owner is in a much better position to enforce trademark rights.

2. Consider subscribing to a trademark watch service: A trademark owner can’t monitor and track every infringing use. Trademark watch services allow the trademark owner to monitor relevant markets and Internet content for possible infringing activity. Consider designating outside counsel to review these reports as they come in. By working with a watch service, owners can be notified of infringing activity sooner rather than later and can take swift action as these issues arise.

3. Immediately notify infringers of infringing activity: When infringing activity is detected, brand owners should report this infringement to the infringer and the platform/outlet where the infringement took place. Many of these entities do not want to be liable for any contributory infringement, so they have mechanisms in place to remove infringing content once they become aware of it.

4. Use your trademarks correctly and with the correct trademark symbol: Using a trademark symbol conditions customers to recognize your brand names and logos and to start associating them with your business.

PART VI: FAQS ABOUT TRADEMARKING PRODUCT NAMES

1. Can product names be trademarks?

Yes. Business names, product names, logos, and labels can all be trademarks. You acquire a trademark by using your mark in commerce—in other words, using it when you conduct your business. You should register your product name trademark with the U.S. Patent and Trademark Office (USPTO) for the most protection.

2. Does a trademark protect a product name?

Yes. A trademark typically protects brand names and logos used on goods and services.

3. Do I copyright or trademark my brand name?

You trademark brand names, like the names of products. Copyright laws protect original artistic/creative work. Trademark laws protect items that distinguish or identify a particular business or its products or services from the competition.

4. How do I trademark a product name?

To trademark a product name, you’ll need to file a trademark application with the USPTO. The application will require you to provide information about your product, as well as the proposed mark. Once the application is filed, it will be reviewed by an examining attorney to ensure that it meets all the legal requirements for registration. If it does, the mark will be published in the Official Gazette, and anyone who believes they would be harmed by the registration of the mark will have an opportunity to file an opposition. If no one files an opposition, or if the opposition is unsuccessful, your mark will be registered and you’ll be able to use it to brand your product.

5. What are the benefits of trademarking a product name?

There are several benefits to trademarking a product name, including:

It can help you establish and protect your brand identity.
It can help you distinguish your products from those of your competitors.
It can help you build customer loyalty and goodwill.
It can give you legal recourse if someone else uses your product name without permission.
It can help you avoid costly disputes down the road.

Michael Kondoudis

For more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories.

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

Seven Easy Ways to Get Your Business Ready for the Metaverse

April 5, 2022 by Michael Kondoudis

You DO NOT need to understand it all to get ready.

If you are like most business owners, you’re probably wondering what the Metaverse is and how it will affect your business. You are also wondering how to take advantage of it.

Here are seven easy ways to get ready for the Metaverse right now.

1. Understand the concept of the Metaverse
2. Watch for opportunities to advertise on Meta (Facebook)
3. Raise brand awareness or promote a product with your own NFT
4. Learn how to create virtual reality (VR) content
5. Get involved in virtual real estate
6. Consider ways to gamify your brand
7. Be sure that your trademarks are protected in the Metaverse

1. Understand the concept of the Metaverse

The good news is that you DO NOT have to understand it all. You just need to familiarize yourself with the concept of the Metaverse and the platforms that will power it. That way, you can make informed decisions about when and how to start your entry into the Metaverse.

Just know that the Metaverse is a virtual environment that will allow users to interact and engage with each other.

2. Watch for opportunities to advertise on Meta (Facebook)

You can be sure that Meta will offer virtual advertising at some point. You may be able to create Facebook Ads in the Metaverse, in addition to building your virtual store or service.

3. Raise brand awareness or promote a product with your own NFT

You DO NOT need to be a “techie” for this. You can outsource the process just like you can outsource an app. An NFT with your name or logo is a great way to get attention and some practical experience for the future.

Do you need help with your trademark?

4. Learn how to create (or buy) virtual reality (VR) content

Here again, you DO NOT need to be a “techie.” You can outsource the content development process just like you can outsource development of an app. Virtual reality content is a great way to get attention and gain experience for the future.

5. Get involved in virtual real estate

Owning virtual real estate comes with the same two advantages as physical real estate. It’s an investment that you may be able to resell or rent out. Also, you can use it for your business.

6. Consider ways to gamify your brand

Games will be a major part of the Metaverse, just like apps and NFTs. Plus, it’s easier than ever to create games. For example, Nike and Panera are creating virtual worlds to accompany their physical products and services. You don’t need the scale of a brand like Nike to engage customers with a branded game.

7. Be sure that your trademarks are protected in the Metaverse

Trademarks need specific protections for virtual goods and services in the Metaverse. The process of trademarking a brand for the Metaverse usually takes more than a year. So, it makes sense to get started with a new trademark application now so that you can focus on executing your Metaverse business plans.

Final Thoughts

As the world becomes increasingly digitized, and we move closer to immersive virtual realities, businesses need to start thinking about how to enter the virtual world of the Metaverse – and how to monetize it. The Metaverse will be a reality in the next few years, and even if your business is not involved in cryptocurrencies, gaming, or virtual reality, the Metaverse will affect you. Preparing now will ensure that you’re not left behind. Start now!

Do you need help with your trademark?

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

How to Figure Out If Your Trademark Is Protected For The Metaverse

April 1, 2022 by Michael Kondoudis

Trademarks Protect NFTs, Virtual Products, and Virtual Services

The future is here, and it’s virtual. The Metaverse will happen, and it’s going to be big. It will bring both significant business opportunities and risks, including risks to trademarks. That makes trademark protection for virtual uses critical as brands begin their entries into the Metaverse.

The Rush Into The Metaverse Has Started

Companies are already moving into the Metaverse, and brands are collaborating with digital platforms to launch virtual products and experiences. For example, Gucci recently partnered with Roblox to offer an award of a limited-edition bag that was later sold online for over $4000!

Experts project that Metaverse revenue could grow to over $400 billion by 2025. The time has come for companies to consider:

(1) how their brands will be perceived and engaged in these new digital platforms; and

(2) the risks that come with these new opportunities.

Metaverse Trademarks Protect NFTs, Virtual Products and Virtual Services

Trademark protection has become a key issue as companies and brands plan their entries into the Metaverse. Trademark laws protect brands. More specifically, trademark laws protect brands by protecting trademarks from exact imitation (copying) and from the use of confusingly similar trademarks by competitors.

Trademarks are a way to strengthen your brand and protect it from misuse by the competition. Trademarks can protect product names (e.g., an NFT authenticated product), a company name, a service (e.g., a crypto exchange marketplace), or a phrase used to identify a brand. Names, logos, and slogans are the most common types of trademarks. Trademarks are an easy, cost-effective marketing tool that you can use in any shape or form!

Do you need help with your trademark?

Examples of NFT and Metaverse Trademarks

Every day, forward-thinking companies are applying to register their trademarks for use in virtual reality. This includes applications covering virtual products and services that will fuel the Metaverse, as well as NFTs and crypto collectibles. For example:

Nike: The footwear and apparel giant filed applications for virtual clothing, footwear, and sporting equipment.

McDonald’s: The restaurant chain filed trademark applications for virtual food, beverages, and stores featuring home delivery.

The New Your Stock Exchange: The NYSE filed an application for cryptocurrency and crypto exchanges.

Victoria’s Secret: The clothier filed applications for virtual clothing and fashion shows

Billie Eilish: The recording artist filed applications for NFTs and Multimedia authenticated by NFTs

Waiting to Trademark Your NFT or Virtual Product for the Metaverse is Risky

Waiting to confirm trademark rights for virtual products and services comes with many risks. The most significant risk is that a company may find it difficult to enforce its rights in the Metaverse and combat infringement. Why?

Trademarks are not without limits. Trademark protections usually apply only to the products and services listed in a trademark registration and those reasonably related to them. So, for example, a trademark registration for running shoes could cover all athletic footwear and even socks and sandals. But, will that same trademark registration cover computer code that looks like a shoe when rendered in virtual reality? The answer is probably no. After all, footwear and computer code are not all that similar. This is uncharted territory. This is why companies are rushing to file new trademark applications for virtual products and services.

Do you need help with your trademark?

How to Figure Out If Your Trademark is Protected for the Metaverse

Trademark protection for the Metaverse is essential. So, how can a company determine whether its trademarks are protected for the Metaverse? Just ask this one question:

Do you have a federal registration for virtual products or services for each trademark you intend to use in the Metaverse?

If the answer is no and you haven’t applied to get them, your trademarks are probably not protected for the Metaverse.

Final Thoughts

If need any more reason to register your NFT, blockchain and virtual product trademarks for the Metaverse, consider the cost vs. risk. The cost to register a trademark is on the order of a few thousand dollars. By comparison, the cost to litigate whether a trademark registration for a physical product or service covers computer code can easily be ten or even 100 times more. Trademark registration is an ounce of prevention to avoid a pound of cure.

Every company contemplating moving into the Metaverse needs to develop a trademark protection strategy. Also, that trademark protection strategy should include trademark registration for virtual products and services.

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

NFT + Crypto + Metaverse Trademark Filing Tote Board

January 18, 2022 by Michael Kondoudis

By Michael Kondoudis, NFT Trademark Attorney

Last Updated on 5 October 2022

This page is a centralized hub of the latest information relating to NFT, Metaverse, and Crypto trademark filings at the United States Patent and Trademark Office (USPTO).

Here you’ll find:

→ NFTs: a chart and breakdown by month of NFT trademark application filings at the USPTO

→ METAVERSE: a chart and breakdown by month of Metaverse trademark application filings at the USPTO

→ CRYPTO: a chart and breakdown by month of Crypto trademark application filings at the USPTO

If you are interested in learning more about NFT trademarks, we invite you to read our Comprehensive Guide to NFTs and Trademarks.

If you are interested in learning more about trademarks in the Metaverse, read our Comprehensive Guide to Metaverse Trademarks.

NFT Trademark Filings

-BY MONTH–

Thus far in 2022, the USPTO has received over 4600 trademark applications that include or relate to NFTs.

In 2021, the USPTO received 2142 trademark applications that included or related to NFTs.

In 2020, it received just 18.

Here’s the monthly breakdown.

MONTH		APPLICATIONS FILED
September 2022		435
August 2022		512
July 2022		533
June 2022		720
May 2022		743
April 2022		876
March 2022		1064
February 2022		770
January 2022		637
December 2021		534
November 2021		425
October 2021		309
September 2021		140
August 2021		160
July 2021		87
June 2021		161
May 2021		117
April 2021		149
March 2021		78
February 2021		15
January 2021		4

Do you need help with your trademark?

METAVERSE Trademark Filings

-BY MONTH–

Thus far in 2022, the USPTO has received over 4600 trademark applications for Metaverse and/or virtual goods or services.

In 2021, the USPTO received 1890 trademark applications for Metaverse and/or virtual goods or services.

In 2020, it received just 155.

Here’s the monthly breakdown.

MONTH		APPLICATIONS FILED
September 2022		393
August 2022		422
July 2022		388
June 2022		538
May 2022		540
April 2022		574
March 2022		773
February 2022		573
January 2022		417
December 2021		369
November 2021		324
October 2021		149
September 2021		121
August 2021		114
July 2021		103
June 2021		111
May 2021		111
April 2021		121
March 2021		108
February 2021		113
January 2021		54

Do you need help with your trademark?

CRYPTO Trademark Filings

-BY MONTH–

Thus far in 2022, the USPTO has received over 4300 trademark applications for digital or cryptocurrency products or services.

In 2021, the USPTO received 3547 trademark applications for digital and/or cryptocurrency goods or services.

In 2020, it received just 1138.

Here’s the monthly breakdown.

MONTH		APPLICATIONS FILED
September 2022		367
August 2022		335
July 2022		403
June 2022		450
May 2022		549
April 2022		584
March 2022		609
February 2022		539
January 2022		481
December 2021		369
November 2021		324
October 2021		149
September 2021		121
August 2021		114
July 2021		103
June 2021		111
May 2021		111
April 2021		121
March 2021		108
February 2021		113
January 2021		54

Major NFT + Metaverse Trademark Filings

The interest in NFTs is growing all the time and that interest extends over myriad industries. Here’s the breakdown.

Sports

Callaway
Jerry Rice
Kobe Bryant
Muhammed Ali
Shaquille O’Neal

Hendrick MotorSports
UFC
TaylorMade
Cobra
Whitespace (Shaun White)
Draftkings

Celebrities / Pop Culture

Albert Einstein
Marilyn Monroe
Elvis Presley
Jay-Z

Lil Wayne
Andy Warhol
Dr. Oz

Movies / Television

A&E
American Psycho
Blockbuster
Hellraiser
John Wick

Spongebob Squarepants
The Texas Chainsaw Massacre
Star Trek
The History Channel

Beauty

Maybelline
Aveeno
Nutrageena
Clinique
Colgate

Hugo Boss
Kiehl’s
Redken
L’Oreal
Palmolive

Apparel

Athleta
Banana Republic
J. Crew
Old Navy
The Gap
Jack Wolfskin
Bulgari

Hugo Boss
Nike
Fila
Puma
Keds
Hush Puppies

Publishing

Allure
Bon Appetit
Entertainment Weekly
GQ
Self

Sports Illustrated
Vogue
Wired
Vanity Fair

Music

Bob Marley
Coachella
Grandmaster Flash
Kiss
Jay-Z
Lil Wayne
Stratocaster

Fender
The Band
Live Nation
Ticketmaster
Dolly Parton
Gene Simmons
Billie Eilish

Collectables / Toys

Bazooka
Baby Shark
Garbage Pail Kids
Entertainment Weekly

Rubik’s
Marvel Mightys
Hot Wheels
Upper Deck

Retail

Brookstone
Circuit City
Pottery Barn
Saks

Walmart
West Elm
Williams Sonoma
CVS

Food / Beverage / Restaurant

McDonald’s
Chuck E. Cheese
Panera
Panda Expres
Nextlevel Burger

Monster Energy
Slim Jim
Utz

Home Improvement

Scotts
Ortho

Miracle-Gro

Travel / Lesiure

Royal Caribbean International

Celebrity Cruises

Do you need help with your trademark?

List of NFT + Metaverse

Trademark Filings

-updated February 2022-

WORD MARK	OWNER	SERIAL NUMBER
Bob Marley	Fifty-Six Hope Road Music Ltd.	97272481
Old Navy	Old Navy (Apparel), LLC	97271953
Banana Republic	Banana Republic (Apparel), LLC	97271944
Athleta	Athleta, Inc.	97271938
J. Crew	J. Crew International, Inc.	97271870
Celebrity Cruises	Celebrity Cruises Inc.	97268832
Royal Caribbean International	Royal Caribbean Cruises Ltd.	97268772
Cruiseverse	Royal Caribbean Cruises Ltd.	97268715
Circuit City	C&R Holding Group, Corp.	97265984
Colgate	Colgate-Palmolive Company	97264283
Palmolive	Colgate-Palmolive Company	97264277
NYSE	NYSE Group, Inc.	97261560
Matbelline	L’Oreal USA Creative, Inc.	97260006
Kiehl’s Since 1851	L’Oreal USA Creative, Inc.	97255985
Dr. Oz	Oz Property Holdings LLC	97255519
Scotts	OMS Investments, Inc.	97254135
Miracle-Gro	OMS Investments, Inc.	97254133
Ortho	OMS Investments, Inc.	97254132
Star Trek	CBS Studios Inc.	97254052
Bulgari	Bulgari S.p.A.	97253264
Paneraverse	Pumpernickel Associates, LLC	97251535
Panera	Pumpernickel Associates, LLC	97251429
Kobe Bryant	Kobe, Inc.	97244916
Grandmaster Flash	Joseph Sadler	97244525
Blockbuster	Blockbuster L.L.C.	97229845
Pottery Barn Kids	Williams-Sonoma, Inc.	97231083
Pottery Barn Teen	Williams-Sonoma, Inc.	97231082
Pottery Barn	Williams-Sonoma, Inc.	97231081
West Elm	Williams-Sonoma, Inc.	97231080
Williams Sonoma	Williams-Sonoma, Inc.	97231079
Jack Wolfskin	Jack Wolfskin Ausrüstung für Draussen GmbH & Co.	97226225
Callaway	Callaway Golf. Co.	97226094
Draftkings	Draftkings, Inc.	97224577
Brookstoneverse	BKST Brand Holdings LLC	97221920
Gap	Gap (Apparel), LLC	97215886
Crocs	Crocs, Inc.	97212947
Coachella	Coachella Music Festival, LLC	97205715
Lil Wayne	Amschel de Rothschild II	97201507
Muhammad Ali	Muhammad Ali Enterprises LLC	92184622
Walmart	Walmart Apollo, LLC	97197296
The Texas Chainsaw Massacre	Vortex, Inc.	97197245
Jerry Rice	Rice, Jerry	97197064
Hendrick Motorsports	Hendrick Motorsports, LLC	97196519
Sports Illustrated	ABG-SI LLC	97185147
Shaq	ABG-Shaq, LLC	97184867
Marilyn Monroe	The Estate of Marilyn Monroe LLC	97184502
Elvis Presley	ABG EPE IP LLC	97184356
Self	Advance Magazine Publishers Inc.	97183965
Allure	Advance Magazine Publishers Inc.	97183964
Bon Appetit	Advance Magazine Publishers Inc.	97183963
Wired	Advance Magazine Publishers Inc.	97183962
Vanity Fair	Advance Magazine Publishers Inc.	97183961
GQ	Advance Magazine Publishers Inc.	97183959
Vogue	Advance Magazine Publishers Inc.	97183958
Fanatics	Fanatics, Inc.Ê	97156025
Yahoo	Yahoo Inc.	97166859
Estee Lauder	Estee Lauder Inc.	97159546
Nanette Lepore	BR Brand Holdings LLC	97132536
Brookstone	BKST Brand Holdings LLCÊ	97132536
JAY-Z	SC BRANDING LLC	97118641
Clinique	Clinique Laboratories, LLC	97115394
Live Nation	Live Nation Worldwide, Inc.	97089071
Ticketmaster	Live Nation Worldwide, Inc.	97089225
Albert Einstein	The Hebrew University of Jerusalem	97063114
Ring Pop	The Topps Company, Inc.	97072868
Mars Attacks	The Topps Company, Inc.	97072859
Garbage Pail Kids	The Topps Company, Inc.	97072832
Bazooka	The Topps Company, Inc.	97072828
American Psycho	Edward R. Pressman Film Corporation	90796288
Marvel Mightys	Marvel Characters, Inc.	90791278
Saks	Saks.com LLC	90789965
Hellraiser	Park Avenue Entertainment LLC	90780486
Hot Wheels NFT Garage	Mattel, Inc.	90767267
Entertainment Weekly	Entertainment Weekly, LLC	90751600
Life	TI Gotham Inc.	90751564
Kiss NFT	Kiss Catalog, Ltd.	90705581
John Wick	Lions Gate Entertainment Inc.	90688332
UFC	Zuffa, LLC	90667930
Stratocaster	Fender Musical Instruments Corp.	90626105
Fender	Fender Musical Instruments Corp.	90626068
Upper Deck	The Upper Deck Company	90604339
Andy Warhol	The Andy Warhol Foundation for the Visual Arts, Inc.	90602664

I. NFT Trademark Filings (by Month) (jump)

II. Metaverse Trademark Filings (by Month) (jump)

III. Major NFT + Metaverse Trademark Filings (by sector) (jump)

IV. List of NFT + Metaverse Trademark Filings (jump)

Ready to take the next step toward LEGALLY owning your NFT, Metaverse, or Crypto Trademarks?

We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting your NFT, Metaverse, or Crypto trademarks, we invite you to book a FREE brand protection strategy session with us here.

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

Trademarks and the Metaverse: The ULTIMATE GUIDE

January 12, 2022 by Michael Kondoudis

By Michael Kondoudis, Metaverse Metaverse Attorney

This is a COMPLETE guide to trademarks and the Metaverse.

Most business owners and entrepreneurs know the importance of trademarks. But how do you legally protect those trademarks in the Metaverse?

This guide has the answers.

So if you want to:

Understand the basics of the Metaverse
Why businesses need to prepare for the Metaverse
How to use the Metaverse for profit
How to prepare and safeguard your brand for the Metaverse
Learn about trademarking brands
Discover how to leverage trademarks in the Metaverse

Then this guide is for you.

Let’s get started.

CONTENTS

I. THE BASICS OF THE METAVERSE

II. HOW BUSINESSES CAN USE THE METAVERSE

III. HOW TO PROTECT YOUR BRAND IN THE METAVERSE

IV. HOW TO PREPARE FOR THE METAVERSE

PART I: THE BASICS OF THE METAVERSE

In this section, we’ll explore the Metaverse and what makes it so important to the future of business.

What does the word “metaverse” mean?

The term “metaverse” literally means “beyond the universe.”

What is the Metaverse?

At its most basic level, the Metaverse will be a virtual and immersive world that parallels our own. It will be inhabited by digital representations of people, places, and things, and users will be able to experience digital lives that mirror their real lives in many respects. Users will communicate, share, and work with others and interact with elements in the virtual world – just like we do in the physical world.

Features of the Metaverse

The potential of the Metaverse will only be limited by technology – for now. In the future, the only limits will be users’ imaginations. The primary features of the Metaverse ensure this limitless potential.

Some of the features of the Metaverse are:

1. Persistence: The Metaverse will always be “on.” It won’t be reset, rebooted, or unplugged. Users will enter and leave it at will, and content will always be available. This constant availability will provide a continuity that will enhance users’ experiences.

1. Immersion: Users in the Metaverse will experience a new level of immersive and interactive experiences on par with the real world. As VR and AR technologies improve, so too will users’ sensory experiences. There will be a time when the Metaverse will engage users’ senses as much as in the real world.

1. Decentralized: In contrast to today’s social media companies, no single entity or entities will have control over the Metaverse. It will be more like the Internet and less like social media platforms.

1. Virtual Marketplaces and Economies: The Metaverse will permit users to participate in virtual marketplaces – including those of ideas, culture, art, and business. These marketplaces will allow users to buy, sell, and share digital assets like NFTs, virtual real estate, event tickets, information, and virtual goods. This is the future importance of digital currencies.

1. Amplified social experiences: The Metaverse will empower users to build social links with users and AI entities. Through these links, users will share information, content, and ideas and “co-experience” virtual events.

1. Boundless opportunities: Because it will be virtual, the Metaverse will not suffer from the limitations and barriers of the real world. It will be an endless virtual space with extreme accessibility from anywhere at any time.

Why should businesses care about the Metaverse?

Businesses should care about the Metaverse because retail will be one of the largest sectors in it, with social experiences a close second.

Businesses should also care about the Metaverse because it will impact their marketing and branding. For example, information and analytics collected from the Metaverse can be leveraged to increase sales in the real world. Plus, the Metaverse will be a new market for products and services.

The Metaverse will impact marketing because it will be an opportunity (1) to reach customers in an entirely new dimension and (2) to collect consumer information based on how users behave and act in the Metaverse. These new connections and information can then be leveraged to increase sales and brand awareness in both the real world and the virtual world of the Metaverse.

Think about it. The Metaverse will be a world that exists in parallel to our own. It will be inhabited by users living second lives – wholly digital lives – that parallel their real lives. Users will interact with other users, engage in commerce, travel, learn, and consume content – just like in the real world. It will be an untapped market with digital users ready to buy your products and services.

The Metaverse will impact branding. As the Metaverse grows and matures, branding and advertising opportunities will increase. Examples of the opportunities that await in the multiverse include:

- virtual retail stores (signage and displays)
- virtual popups (special events to engage and network)
- virtual training/classes (branded content and sponsorships)
- metaverse events (concerts and performances)
- digital products (NFTs and virtual clothing for user avatars)
- product placements (branded products in games and virtual billboards).

Basically, anywhere we can use branding in the real world will have a digital partner in the Metaverse.

Who is trademarking brands for the Metaverse?

It seems that everyone is getting ready for the Metaverse. The number of brands applying to trademark their brands for Metaverse grows every month. Here are just a few of the first:

Footwear

• Nike

• Converse

Entertainment Brands

• Ticketmaster

• Elvis Presley Enterprises

Sports

• Jerry Rice

• Hendrick Motorsports

Toy Brands

• Hot Wheels

• Bazooka

Retail

• Walmart

• Saks

Publishing

• Sports Illustrated

• Vanity Fair

Do you need help with your trademark?

When can we expect to see the Metaverse?

Authorities estimate that it may not be until 2030 for Metaverse to really take off. Still, aspects of the Metaverse currently exist. Ultra-fast broadband speeds, virtual reality headsets, and persistent always-on online worlds are already up and running, even though they may not be accessible to all. Plus, forward-thinking companies are already preparing their brands for the Metaverse.

PART II: HOW BUSINESSES CAN USE THE METAVERSE

In this section, we’ll explore some of the ways businesses can use the Metaverse to increase revenue and expand brands.

The Metaverse will provide increasingly immersive experiences as it matures and evolves. But, in some ways, the Metaverse is already here, and forward-thinking companies are already offering more and more Metaverse-like experiences.

Examples of Metaverse-like experiences

The National Football League (NFL) has opened a virtual store in the online video gaming platform Roblox. The NFL’s virtual store sells virtual team jerseys and helmets to Roblox players.

• Nike has also opened a new world on the Roblox gaming platform. This digital realm, named Nikeland, offers Roblox users official digital Nike-branded clothing for their avatars, along with mini-games and other “co-experience” events.

• Gucci has turned to the Roblox gaming platform to host a virt100th-anniversary celebration event.

• Burberry has ventured into the Metaverse by collaborating with the video game Honor of Kings to place digital Burberry designs into the gameplay.

Top 7 ways a business can use the Metaverse

The opportunities that will be available in the Metaverse are seemingly infinite, and many haven’t even been conceived of – yet. Still, the Metaverse offers important opportunities for today and in the near future.

These are the top seven ways businesses can leverage the Metaverse:

1. Selling virtual goods – It is estimated that more than $100 billion was spent on virtual products in 2021. More importantly, this $100 billion reflects just a sample of the growing opportunity for businesses to generate revenue in the Metaverse.

2. Virtual Showrooms or vStores – vStores allow customers to take tours of showrooms and interact with all kinds of objects, including products. This ability to visualize and interact with products, such as furniture, cars, fashion, and NFT assets, can happen entirely in the Metaverse – without the burden of a brick-and-mortar footprint.

3. Product Sales Training – The Metaverse will offer “co-experience” events, including training and education seminars. Repetitive training, such as product demos and sales techniques, can be held in the Metaverse at almost no cost.

4. Customizers + Configurators – Because the Metaverse will be immersive, businesses will be able to show their customers “virtual demos” of customized products, such as furniture, automobiles, homes, and commercial spaces.

5. Reducing Returns and Higher Sustainability – With virtual tours and reveals, customers can better visualize products before buying them, which reduces returns and exchanges. Fewer returns lowers overhead and is good for the environment.

6. Lowered Research and Development Costs– Virtual prototypes in the Metaverse will reduce the need for physical prototypes and samples.

7. Advertising – The Metaverse will offer endless opportunities for brand placement in games, signage in virtual stores, and digital products.

PART III: HOW TO PROTECT YOUR BRAND IN THE METAVERSE

In this section, we’ll go over the basics of the trademarking process and how to trademark NFTs

How do you protect a brand in the Metaverse?

The best way to protect a brand in the Metaverse is to trademark the name, logo, and any phrase or slogan that you use to promote your virtual products and services. Trademarks protect brands, including brands in the Metaverse. Trademarking your brand’s name, logo, and phrase for virtual goods and services is the best way to protect it.

Can you legally protect your brand in the Metaverse?

Yes, you can legally protect the name and logo of your virtual products and services with a trademark. Trademarking your virtual product name is official confirmation that you legally own it.

How do you legally protect your brand in the Metaverse?

The most effective way to protect the name of your virtual product or service is to trademark it. Trademarking your virtual product name will protect it by giving you exclusive rights to use it and preventing others from using the same or similar name in the Metaverse.

Trademarks in the Metaverse = Protection for virtual goods and services

What exactly is a trademark?

A trademark is a distinctive word, symbol, or phrase that differentiates the source of goods (or services) from one enterprise from those of others. Trademarks represent brands and protect brands, including brands in the Metaverse. Buyers use trademarks to pick among brands of products and services.

What can you trademark for the Metaverse?

The most common Metaverse trademarks are words (names), phrases, logos, and designs.

Should you apply for a Metaverse trademark?

Yes, if you have a trademark, you should file for a Metaverse trademark. Filing for your trademark in the Metaverse right now is the best way to prevent anyone else from trademarking it for their Metaverse business. Plus, getting a Metaverse trademark ensures that your mark is protected in the virtual world. So, you should file for Metaverse trademarks.

How do trademarks protect brands in the Metaverse?

Trademarks protect a company’s identity and the reputation that it builds in its brand, including in the Metaverse. Also, trademarking your brand is a powerful way to identify and distinguish it from the competition, which:

- makes it easier and less expensive for customers to find your products

- reduces the cost of marketing

- builds your brand identity

Brand identity and distinction will be critical in the immersive world of the Metaverse.

Top three reasons to trademark a brand for the Metaverse

Trademarking your brand for the Metaverse will prevent anyone else from trademarking the brand and taking it from you.

1. It will prevent anyone else from registering the same or similar name for their brand in the Metaverse

2. It will increase customers confidence in your brand, which increases trust and value

3. It is a powerful tool to stop unauthorized use of your brand by copycats in the Metaverse

Where do you get a Metaverse trademark?

You get a Metaverse trademark from the U.S. Patent and Trademark Office (USPTO). To get a trademark for the Metaverse, you need to apply to the USPTO and then navigate an examination process. Metaverse trademarks are granted by the USPTO.

How to get trademark protection in the Metaverse?

Filing for a Metaverse trademark at the U.S. Patent and Trademark Office (USPTO) has four main steps:

1. Clearing the trademark through a professional trademark search,

2. Preparing and applying a strategically crafted trademark application,

3. Navigating the application examination process at the United States Patent and Trademark Office (USPTO), and

4. Properly using your trademark on your digital products and services.

When should you trademark your brand for the Metaverse?

Most authorities agree that in most situations, it is best to file new trademark applications early – even before a business begins selling or marketing in the Metaverse.

Firstly, the trademarking process can take up to 12 months in most cases. So, starting as early as possible will reduce unprotected sales in the Metaverse.

Secondly, filing early reduces the chance that another business has applied to trademark your brand for the Metaverse. Most businesses don’t know that every day of delay is a risk that someone else might apply to register a trademark similar to theirs. If that happens, the USPTO may refuse to register your Metaverse trademarks. Thousands of new applications are filed every day, so waiting for as little as a few weeks can become a risk.

If you have a trademark, you should file for a Metaverse trademark as soon as possible. Filing for your trademark in the Metaverse right now is the easiest way to avoid a costly legal fight over ownership of your trademark in the Metaverse. So, you should file for a Metaverse trademark right now.

What are some products to include in a trademark application for the Metaverse?

• virtual goods

• goods for use in online environments, virtual online environments, and extended reality virtual environments

• downloadable software for users to search, browse, view, and purchase virtual goods,

• retail store services featuring virtual goods

• entertainment services, namely, providing online, non-downloadable virtual goods

• virtual reality software for interactive entertainment and virtual reality gaming

• software for the creation, production, and modification of digital designs and characters, avatars, digital overlays, and skins

Do you need help with your trademark?

How can you check if a brand is trademarked for the Metaverse?

The best way to check whether a brand is trademarked for the Metaverse is to use the USPTO’s trademark registration database via the Trademark Electronic Search System (TESS).

In the BASIC WORD MARK SEARCH function, you can type a brand name and see the products and services for which it has been trademarked. Brands trademarked for products and services such as virtual goods, goods for use in online environments, retail store services featuring virtual goods, and software related to the sale of virtual goods or modifying digital goods.

5 Steps to Protect Your Brand in the Metaverse

1. Register your trademarks: Brand owners are strongly encouraged to register their trademark with the USPTO and foreign equivalents. In the United States, doing so creates a rebuttable presumption that the owner owns the exclusive right to use its trademark in connection with its goods or services and puts the owner in a much better position to enforce against any unauthorized use of its mark in either the virtual world or the real world.

2. Consider subscribing to a trademark watch service: A trademark owner can’t monitor and track every infringing use in the Metaverse. Trademark watch services allow the trademark owner to monitor relevant markets and Internet content for possible infringing activity. Consider designating outside counsel to review these reports as they come in. By working with a watch service, owners can be notified of infringing activity sooner rather than later and can take swift action as these issues arise.

3. Immediately notify platforms and infringers of infringing activity: When infringing activity is detected in the Metaverse, brand owners should report this infringement to the platform. Many of these entities do not want to be liable for any contributory infringement, so they have mechanisms in place to remove infringing content once they become aware of it.

4. Establish a metaverse presence: Finally, brand owners should consider establishing a metaverse presence of their own. Aside from the benefits that come with leveraging the Metaverse as an alternate means of reaching consumers and building brand awareness via a thriving and growing market, it also provides an opportunity to monitor activity, and it may even help thwart trademark infringement by bad-faith actors.

5. Use your trademarks correctly and with the correct trademark symbol: In the Metaverse, users will encounter your brand digitally, much as they do now on a website. Using a trademark symbol conditions customers to recognize your brand names and logos and to start associating them with your business. Read more about trademark symbols here.

PART IV: HOW TO PREPARE FOR THE METAVERSE

In this section, we’ll discuss a strategy that any business can follow to prepare for the Metaverse.

The Metaverse is coming, and it will offer tremendous business opportunities in the near future. The key is to prepare in advance so that you don’t lose your brand in the Metaverse and execute your marketing strategies effectively.

How can you prepare for the Metaverse?

Businesses can prepare for the Metaverse in many of the same ways that they prepare to sell their products and services in a new “real world” market. The Metaverse will be a new virtual market for your products and services. And, like any other new market, businesses need to consider how they present their brand and target their ideal customers.

4 ways a business can prepare for the Metaverse

If your company is developing a digital product or service, or one that can be sold or advertised in the Metaverse, then you need to prepare for the Metaverse. Here are four ways t get ready:

1. Identifying a target customer base for your product

2. Develop a strategy to promote and advertise your brand and products in the multiverse

3. Build a presence in the multiverse by opening a virtual retail shop

4. Ensure that your trademarks are registered for digital and virtual reality products. This is the key to protecting a brand in the Metaverse

TAKE THE NEXT STEP

Take the next step toward LEGALLY owning your brand for the Metaverse!

We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting your trademarks for use in the Metaverse, we invite you to book a FREE brand protection strategy session with us here.

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

NFTs and Trademarks: THE ULTIMATE GUIDE

December 20, 2021 by Michael Kondoudis

By Michael Kondoudis, NFT Trademark Attorney

This is the ultimate guide to NFTs and trademarks.

Interest in non-fungible tokens (NFTs) is increasing. So too are the number of companies that have filed trademark applications for their NFT brands. In 2020, the U.S. Patent and Trademark Office received just 20 trademark applications for NFT brands. In 2021, that number was over 1400! NFTs are not just for fine art and collectibles anymore.

So, if you’re ready to learn about NFTs, trademarks, and how to protect NFT brands, this guide is for you.

CONTENTS

PART I: THE BASICS OF NFTs AND TRADEMARKS

What NFTs are and what they do
Examples and uses of NFTs
NFT trademarks

PART II: INTELLECTUAL PROPERTY AND NFTs

How Trademarks apply to NFTs
How Patents apply to NFTs
How Copyrights apply to NFTs

PART III: PROTECTING NFTs WITH TRADEMARKS

How to protect an NFT
Why trademarking an NFT is a good idea
Which parts of an NFT brand can be trademarked

PART IV: HOW TO TRADEMARK NFTs

When to trademark an NFT
Where to trademark an NFT
The NFT trademarking process
The common trademark classes for NFTs

PART 5: FREQUENTLY ASKED QUESTIONS

1. THE BASICS OF NFTs + TRADEMARKS

What does NFT mean?

NFT stands for “non-fungible token.”

Non-fungible means, more or less, that something is not interchangeable. Instead, it is one-of-a-kind, individual, and not replaceable. So, for example, a Picasso painting is “non-fungible” because it is one-of-a-kind and irreplaceable. In contrast, a $1 bill is fungible because someone can swap one for another that is essentially the same.

What is a Non-Fungible Token?

A non-fungible token or NFT is a digital asset that can be used to represent unique, one-of-a-kind assets – usually crypto-properties. An NFT can technically contain anything digital, including drawings, animated GIFs, songs, or items in video games. NFTs can also represent a wide range of property assets that exist in the real world property such as a piece of art, a song, videos, collectibles, and even real estate.

NFTs cannot be copied because their digital ownership is tracked with blockchain technology, and it is one-of-a-kind uniqueness that makes an NFT valuable.

Purchasing an NFT is akin to buying an original Jackson Pollack painting. While prints may be available, only you own the original.

What do NFTs do?

NFTs allow you to buy and sell ownership of unique digital and physical items and keep track of who owns them using the blockchain. Blockchain records cannot be forged because they are maintained by thousands of computers worldwide.

NFTs can have only one owner at a time, and blockchain technology secures their ownership information. This prevents the easy copying of digital assets, which historically reduced the market for digital assets. In this way, NFTs ensure the authenticity of unique properties, especially collectible digital properties (crypto-collectibles).

Now, because NFTs can ensure the uniqueness and ownership of digital assets, the markets for digital assets are skyrocketing.

Do you need help with your trademark?

How is an NFT different from a cryptocurrency?

An NFT is built on the same technology as cryptocurrencies, but they differ in one crucial aspect – interchangeability. Cryptocurrencies are “fungible,” meaning they are interchangeable. In contrast, an NFT cannot be exchanged or swapped.

What are some examples of NFTs?

Theoretically, NFTs can be used for any property that is (1) unique and (2) needs provable ownership. So, NFTs can represent almost any physical or virtual property, including:

- Digital artwork
- A limited run of sneakers
- An essay
- Digital collectibles
- Domain names
- Tickets
- Debts
- Parcels of real estate

How are companies using NFTs?

The most immediate uses for NFTS include brand control, increased revenue, brand awareness, and enhancing trust/authenticity.

Authentication: Many brands leverage blockchain NFT technology to create an authentication system for their customers. For example, luxury brands are issuing serial numbers for their products and using NFTs to provide authentication services. Trust in the authenticity of high-end items protects the market for those items and their marketability.

Brand Awareness: More and more companies and organizations are creating brand awareness by licensing their brands through the release of NFT packages. NFTs for bespoke footwear, clothing, and artwork are increasingly sold at auctions.

New streams of revenue: More and more companies and organizations are creating new revenue channels by licensing their brands and authenticating digital products by NFT packages. Music bands, for example, may license their branding or images to release exclusive digital content for their fans.

Brand Protection: Only the owners of trademarks can use them, this includes the owners of NFT trademarks. When you trademark the name of your NFT, you are the only one who can use that name for NFTs and crypto-properties.

What is a trademark?

A trademark is a badge of origin that distinguishes the source of goods (or services) from one enterprise from those of others. The most common trademarks for NFTs are names and logos.

Trademarks prevent consumer confusion by ensuring that competitors cannot use the same or similar name or symbol. This exclusivity is particularly valuable when it comes to NFTs because their value is based on authenticity and trust.

A Federal trademark is an enhanced trademark that has been certified by the U.S. government. It comes with exclusive nationwide legal rights.

What do trademarks protect?

Trademarks protect brands, including NFT brands and properties represented by NFTs.

Can an NFT be trademarked?

Yes. NFTs can be trademarked. Trademarking an NFT is the best way to protect your NFT brand. NFTs can definitely be trademarked.

What is an NFT trademark?

An NFT trademark is a trademark for a non-fungible token that represents digital media, virtual goods, digital collectibles, and other crypto-assets that can be bought, sold, exchanged, and transacted using blockchain technology. Examples of a trademark for an NFT would be a footwear brand trademarking its name for:

• Downloadable digital media namely, digital assets, digital collectibles, digital tokens and non-fungible tokens (NFTs)

• Provision of an online marketplace and registry for buyers and sellers of digital assets, digital collectibles, digital tokens and non-fungible tokens (NFTs)

• Digital assets and digital collectibles sold as non-fungible tokens (NFTs)

See U.S. trademark application no. 97212947 filed by Crocs, Inc.

2. INTELLECTUAL PROPERTY AND NFTs

NFTs are a new technology and are the cutting edge of digital and e-commerce. So, it should be no surprise then that NFTs and digital commerce raise many intellectual property (IP) law questions. The creation, monetizing, promotion, selling, trading, transferring, and storage of NFTs come with important trademark, patent, and copyright implications.

How does Trademark apply to NFTs?

To be clear, trademark protection definitely apples to an NFT. Trademarks protect brands, including NFT brands. Trademarking an NFT ensures that no one else can use the same or similar name or logo for their NFT. Trademarking an NFT ensures that no one else can use your name or logo, which keeps them distinctive. Trademark protection is a must for any brand owner who wants to protect their NFTs. That’s how trademarks apply to NFTs.

Trademark = protection for names and designs for your NFT

How do you get the most trademark protection for an NFT?

To get the most trademark protection for an NFT, a brand owner should review its existing trademarks and, if needed, apply for additional trademarks for digital assets, crypto-assets, and virtual goods authenticated by NFTs. This is how to get the most protection for the name of an NFT.

How do Patents apply to NFTs?

Patent protection applies to NFTs. Patents protect inventions, including crypto and blockchain-related inventions. A patent makes it illegal for anyone else to use your invention. Examples of crypto and blockchain inventions include methods of authenticating and transferring NFTs and new ways to mint cryptocurrencies. That’s how patents apply to NFTs.

Blockchain patents are increasing in number and value, and the U.S. Patent and Trademark Office is granting more and more of them.

Patent = protection for crypto and blockchain inventions

How does Copyright apply to NFTs?

Copyright applies to NFTs. Copyrights protect from copying creative works and software, including NFTs and the assets that they authenticate. For example, a one-of-a-kind collectible, authenticated using blockchain technology, can be copyrighted.

Copyright = protection from copying of your digital/crypto-asset

3. PROTECTING NFTs WITH TRADEMARKS

How do you protect an NFT?

The best way to protect an NFT is to trademark the name and logo you use to brand the NFT. Trademarks protect brands, including NFT brands. Trademarking your NFT name is the best way to protect it.

• Can you legally protect your NFT name?

Yes, you can legally protect the name of your NFT with a trademark. Trademarking your NFT name is official confirmation that you legally own it. Confirming the legal ownership of the name of your NFT enhances customer trust in the authenticity of the asset represented by your NFT.

• How do you protect your NFT name?

The most effective way to protect the name of your NFT is to trademark it. Trademarking your non-fungible token name will protect it by giving you exclusive rights to your token name and preventing others from using the same or similar name for their NFTs.

• Many brand owners wonder if they can trademark the name of their NFT.

To be clear, the answer is YES. You can trademark an NFT name, and an increasing number of businesses have applied to trademark their non-fungible token names! In fact, the U.S. Patent and Trademark Office is seeing a surge in trademark applications for NFTs.

- - 2020 – 20 applications
  - 2021 – 1400+ applications

Trademarking the name of your NFT is the most effective way to protect it and the brand identity you’re building in your brand of properties represented by your non-fungible tokens.

Why should you trademark your NFT name?

Yes. NFTs ensure the authenticity of a unique item. But, to be of value, buyers must have faith in the NFT. That is where trademarks come in.

Trademarking the name of your NFT (or logo) will:

1. prevent anyone else from registering the same or similar name for their NFT and taking the name from you
2. increase customers confidence in your NFT brand, which increases NFT trust and value
3. protect against unauthorized use of your NFT brand by copycats, which could undermine trust in the authenticity of your NFTs

Trademarking your NFT brand prevents anyone else from trademarking the brand and taking it from you.

Remember: The value of an NFT is in the trust that it represents authentic ownership of a unique item. Trademarks promote consumer confidence by preventing copycats and confusion from using similar names. In short, trademarks let customers know that they are buying a genuine article when they buy your NFT.

Example

A toy company wants to sell in-game items, such as skins, avatars, and powers. To help increase sales, the company decides to authenticate these digital assets with NFTs using their brand. As a result, customers are more inclined to buy NFT secured in-game items. This is what Mattel Inc. is planning on doing with its HOT WHEELS NFT GARAGE trademark (U.S. Trademark Application No. 90767267).

NFT trademarks also protect against the unauthorized use of brand names and logos for someone else’s NFT. This keeps your NFT brand unique and makes your NFT item more valuable.

EXAMPLE

A luxury retailer wants to sell high-end digital products. To ensure that they can maintain premium pricing for their physical inventory and retail store operations, the retailer decides to authenticate its digital products with NFTs. This is what Saks LLC is planning on doing with its SAKS trademark (U.S. Trademark Application No. 90789965).

Trademarking an NFT name and logo also protects against the use of your brand by the competition. This protection reduces confusion and dilution of the uniqueness of a brand.

What parts of an NFT can you trademark?

You can trademark the name and logo you use to promote your NFT or the property represented by your NFT.

You can also trademark services related to NFTs. Some examples include:

financial services such as non-fungible token trading
issuance of digital tokens
providing online non-downloadable virtual goods, namely, digital art, photographs, videos, or audio recordings featuring
creation of online retail stores for others to create hosted crypto collectible and blockchain-based non-fungible token stores

Do you need help with your trademark?

Examples of NFT Trademarks

The surge in NFT trademark applications is fueled primarily by small businesses and individuals. Still, big brands are increasingly taking note and are applying to trademark their brands for NFTs. Naturally, businesses are curious about what an NFT trademark looks like. Here is list of recent applications for an NFT trademark:

1. Bazooka (U.S. TM App No. 97072828)
2. Brookstone (U.S. TM App No. 97130320)
3. Clinique (U.S. TM App No. 97115394)
4. Converse (U.S. TM App No. 97107367)
5. Entertainment Weekly (U.S. TM App No. 90751600)
6. Fanatics (U.S. TM App No. 97156019)
7. Garbage Pail Kids (U.S. TM App No. 97072832)
8. Hot Wheels NFT Garage (U.S. TM App No. 90767267)
9. Jay-Z (U.S. TM App No. 97118641)
10. John Wick (U.S. TM App No. 90688332)
11. Live Nation (U.S. TM App No. 97089071)
12. Saks (U.S. TM App No. 90789965)
13. Stratocaster (U.S. TM App No. 90626105)
14. Ticketmaster (U.S. TM App No. 97089225)
15. UFC (U.S. TM App No. 90668412)
16. Warhol (U.S. TM App No. 90602664)

If you want to know about the latest NFT trademark filings at the USPTO, we invite you to visit our US NFT Trademark Application Information Hub, where we break down the latest NFT trademark applications by month, industry, and major brands.

• Updated Daily •

Who is trademarking NFTs?

A wide range of companies in many industries are trademarking their NFTS. Companies that have filed trademark applications for NFTs include Nike, Puma, Panera, McDonald’s, Willaims-Sonoma, and Pottery Barn. Personalities who have filed trademark applications for NFTs include Kobe Bryant, Shaquille Oneal, Muhammad Ali, and Jay-Z. Here is a list:

Cosmetics and Fashion

- Clinique Laboratories, LLC
- Converse Inc.
- Estee Lauder Cosmetics Ltd.
- Nike Inc.

Toys and Collectables

- Mattel Inc.
- The Topps Company, Inc.
- The Upper Deck Company

Entertainment

- Legend Pictures
- Park Avenue Entertainment LLC
- Entertainment Weekly Inc.
- Lion’s Gate
- Kiss Catalog, Ltd.
- Live Nation Worldwide, Inc.
- Fender Musical Instruments Corporation
- SC Branding LLC (Jay-Z)

4. HOW TO TRADEMARK NFTs

Should you trademark your NFT?

Yes, you should trademark the name of your NFT. Competition in the NFT space is fierce. Trademarking your NFT will ensure that your NFT name and logo:

are available for your exclusive use do not infringe anyone else’s trademarks, which saves you legal headaches
stay unique so that they stand out in the marketplace over time, which keeps your NFT brand recognizable and more trusted
stay legally yours so that you never have to rebrand, so you can invest and promote your NFT with confidence.

These benefits protect your profits.

Top reasons why you should trademark the name of your NFT

Trademarking your NFT ensures that your NFT name and logo do not conflict with any existing registrations. Trademarking involves research to make sure that no one else has trademarks that are the same or similar to your NFT name and logo. Plus, the USPTO only registers trademarks that do not conflict with existing registrations. So, the trademarking process confirms that your NFT name and logo: (1) do not infringe any existing registered trademarks for NFT and (2) are available for your exclusive use

Trademarking your NFT will prevent anyone else from trademarking the same or similar name for their NFT. As a general rule, only one person can own a trademark in an industry, including NFTs. So, by trademarking the name of your NFT, you ensure that no one else can trademark it and take it from you. This makes trademarking great insurance against ever having to rebrand.

Trademarking your NFT will increase its value and the value of the property it represents. Trademarks ensure authenticity, which increases trust in your brand.

Trademarking your NFT name and logo gives you legal permission to use the ® trademark symbol with them. The ® symbol is “public notice” that the name and logo for your NFT are protected under federal law. This enhances your brand credibility and warns competitors to stay clear of your marks, both of which promote trust in the authenticity of your NFT.

Remember: Once you have registered your trademark, it will be officially yours and no one else can use it (or anything similar) without your permission.

How do you trademark an NFT name or property?

You trademark the name of your NFT or crypto-property by applying to the U.S. Patent and Trademark Office (USPTO) and getting your application approved for registration. Trademarking with the USPTO name is a legal process that usually takes about 12 months. So, the sooner you start trademarking your NFT and crypto trademarks name, the better.

Here’s how to start the process to trademark the name of an NFT or crypto-property:

Select a unique name and logo. Read more about how to pick a strong trademark here.
Search the USPTO trademark database to confirm that no one has registered or applied to register the name and logo
Collect the required information and decide on a trademarking strategy
Prepare and file your new application (correctly) with the U.S. Patent and Trademark Office, or “USPTO,” for short.
Navigate the USPTO application review process, which takes several months.
Use the correct trademark symbol. Read more about trademark symbols here.

When should you trademark an NFT name?

Most experts agree that you should trademark your NFT brand sooner rather than later. So, if you are serious about using NFTs to make something marketable, you should trademark the NFT name as soon as possible.

Is it too late to trademark your NFT?

No, it is not too late to trademark an NFT and protect your NFT brand. Non-fungible tokens (NFTs) and NFT brands are growing in popularity. As a result, the U.S. Patent and Trademark Office (USPTO) is receiving an increasing number of new trademarks for NFT brands and virtual goods authenticated by NFTs. Still, far less than .5% of all trademark applications are for NFTs and NFT brands.

Which international classes should you include in your NFT trademark application?

The U.S. Patent and Trademark Office registers trademarks for various NFT-related products and services. Applicants should consider including the following classes in their applications to register an NFT trademark:

- International Class 009 (downloadable media, computer software)
- International Class 035 (business services)
- International Class 036 (financial, banking, and real estate)
- International Class 041 (education and entertainment)
- International Class 042 (scientific and technical services)

Do you need help with your trademark?

What are some examples of NFT-related products and services that can be trademarked?

International Class 009

- Fungible and non-fungible token-based goods for use online and in online virtual worlds
- Downloadable electronic data files featuring artwork, text, images, audio, video, and non-fungible tokens
- Digital media, namely, digital collectibles, digital tokens, and non-fungible tokens (NFTs)
- Downloadable multimedia files authenticated by non-fungible tokens (NFTs)
- Digital tokens; Non-fungible tokens; Digital tokens based on blockchain technology
- Non-fungible tokens used with blockchain technology; non-fungible tokens used with blockchain technology to represent a collectible item

International Class 035

- Provision of an online marketplace for buyers and sellers of NFTs of digital art, music, sports, collectibles, and documents
- Provision of an online marketplace for buyers and sellers of digital properties authenticated by non-fungible tokens (NFTs)
- Providing an online marketplace for the peer-to-peer exchange of personal or digital property and Non-Fungible Tokens (NFT’s)

International Class 036

- Financial services such as non-fungible token trading; Issuance of digital tokens
- Issuance of tokens of value; Issuance of tokens of value, namely, digital tokens for use by members of an online community via a global computer network

International Class 041

- Providing online non-downloadable virtual goods; Providing online non-downloadable virtual goods authenticated by NFTs
- The provision of downloadable virtual goods authenticated by blockchain technology

International Class 042

- Creation of online retail stores for others to create hosted crypto collectible and blockchain-based non-fungible token stores
- Creation of online retail stores for others in the nature of web-based service that allows users to create hosted cryptocurrency and blockchain-based non-fungible token stores

5. FREQUENTLY ASKED QUESTIONS

1. When can you use the registered trademark ® symbol with an NFT?

Once you have a trademark registration from the U.S. Patent and Trademark Office, you can start using the registered trademark symbol ® with your NFT trademark. Read more about trademark symbols here.

2. How do you get a trademark registration?

You get a trademark registration by submitting an application to the U.S. Patent and Trademark Office (sometimes called the “USPTO”). The USPTO is an agency of the federal government, and it administers trademark registrations.

3. How important is it to trademark your NFT?

Very. According to the USPTO, there has been a substantial surge in trademark filings for NFT trademarks. In 2021 alone, over 1400 applications have been filed. This surge represents increased competition in a soon-to-be crowded space.

4. Where do NFTs come from?

NFTs are created on any blockchain that supports smart contract programming. The Ethereum blockchain is a prime example because it supports cryptocurrencies like bitcoin and NFTs. Other blockchain options include:

• Cosmos
• EOS
• Flow by Dapper Labs
• Polkadot
• Tezos
• Tron

Once your NFTs are created and ready for sale, you will need to submit them to a marketplace. Popular marketplaces for Ethereum include OpenSea, Rarible, and Mintable.

5. Can NFTs be trademarked?

Yes. NFTs can be trademarked, and the number of trademark filings for NFT brands at the USPTO is increasing.

6. How do you get an NFT trademark?

You get an NFT trademark by applying to the U.S. Patent and Trademark and successfully navigating the trademark examination process.

TAKE THE NEXT STEP

Take the next step toward LEGALLY owning your NFT brand?

We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting your NFT trademarks, we invite you to book a FREE brand protection strategy session with us here.

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

How to Trademark a Product Name: The ULTIMATE GUIDE

September 21, 2020 by Michael Kondoudis

If you are selling your own product, you need to know how and when to trademark your product name to make sure that you legally own it and no one can take it from you.

By Michael Kondoudis, Small Business Trademark Attorney

This is our ultimate guide to how to trademark a product name.

Most business owners and entrepreneurs know the importance of product names. But how do you legally protect the name of a product?

That’s where trademarks come in. In fact, this is some of the same information that we use to get trademarks for our clients.

CONTENTS

I. THE BASICS OF TRADEMARKS FOR PRODUCTS

II. WHY YOU NEED TO TRADEMARK THE NAMES OF PRODUCTS

III. HOW TO TRADEMARK A PRODUCT NAME

IV. WHEN TO TRADEMARK A PRODUCT NAME

V. HOW TO PROTECT A PRODUCT NAME

VI. SUMMARY OF TRADEMARKING PRODUCT NAMES

VII. FREQUENTLY ASKED QUESTIONS

1. THE BASICS OF TRADEMARKS FOR PRODUCTS

What is a trademark?

Where do you get a trademark for your product name?

What kinds of product names can be trademarked?

The most common product trademarks are words (names), phrases, logos, and designs. Examples include abbreviations and unique names, like these:

2. WHY YOU NEED TO TRADEMARK THE NAMES OF PRODUCTS

Top Six Reasons to Trademark a Product Name

Trademarking is a powerful tool to stop unauthorized use of your product name by copycats. Here are the top six reasons to trademark a product name:

1. Exclusivity

2. Legal Ownership

3. Ensure Distinctiveness

4. Cost-Savings Over Time

5. Deterrence

6. Value

3. Distinctiveness. A trademark for the name of your product helps distinguish your product from others on the market, which means that buyer loyalty for your high-quality product flows to you.

These are important advantages that can help a forward-thinking business.

Top Four Risks of Not Trademarking A Product Name

Choosing not to trademark a unique product name can have serious consequences. Here are the top four risks you face when you don’t trademark your product name.

1. Risk of a rebrand. If someone else trademarks your product name first, they’ll own the exclusive right to use it nationally. You’ll likely have to rebrand.

3. Lost sales due to confusion. Your business could suffer from a loss of revenue if customers confuse your product with one sold under a similar same.

4. Higher costs in the long run. You will likely have to spend more on monitoring and enforcing your product name trademark if it is not registered.

These are just some of the risks that you avoid when you trademark a product name.

Do you need help with your trademark?

Should you trademark a product name?

Yes, you should register a trademark for the name of a product. There are many benefits that come with trademarking a product name. It gives you exclusive rights to use that name or logo. This means that other businesses cannot use it with their products. It will also prevent anyone else from registering a trademark for the name and taking it from you. Trademarking your product name can also help you build brand recognition and credibility.

3. HOW TO TRADEMARK A PRODUCT NAME

Seven steps for trademarking a product name

Choose a Unique and Protectable Brand Name for Your Product
Hire a Trademark Attorney for Your Product Name Trademark
Perform a Trademark Search for the Name of Your Product
Collect the Required Information and Develop Your Strategy
Prepare and File a Trademark Application with the USPTO
Navigate the Trademark Examination Process
Use the ® Trademark Symbol with Your Trademarked Product Name

1. Choose a unique and protectable brand name for your product

Beware: Trademarks are not created equal. There are different kinds, and some are more effective and easier to protect than others.

The best trademarks are distinctive and memorable. They are strong because they excel at reflecting brands.

Some trademarks, however, are weak because they only describe aspects of products or services. Others are legally unprotectable, meaning anyone can use them.

How do you select a product name that is unique and protectable?

To ensure uniqueness, avoid names that are too similar to existing trademarks. (More about that in step #2)

2. Hire a trademark attorney for your product trademark

Why?

Also, the application system uses trademark jargon and “terms of art,” which are words that have specific meanings only in the world of trademarks.

The USPTO recommends hiring a trademark attorney!

The U.S. Patent and Trademark Office recommends applicants work with trademark attorneys:

“we strongly encourage you to hire a U.S.-licensed attorney who specializes in trademark law to guide you throughout the application process.”

www.uspto.gov

There are several reasons why the U.S. Patent and Trademark Office (USPTO) recommends hiring a private attorney. First, an attorney is familiar with the USPTO’s procedures and can ensure that the application is filed correctly. Second, an attorney can help search for existing trademarks to avoid potential conflicts. Third, if there are any objections to the application, an attorney can represent the applicant in proceedings before the USPTO.

3. Perform a trademark search for the name of your product.

This is a crucial step in the trademark registration process.

Why?

THE USPTO’S TESS SYSTEM

For all of these reasons (and others), it’s usually best to have an attorney run your trademark search.

4. Collect Information and Decide on a Trademarking Strategy

The preparation of a new trademark application begins by making some tactical decisions about the protection for which you will want to apply.

For starters, you’ll need to decide:

what is the best format for your mark – is a composite mark better than standard characters? Will you need a “drawing”?;
which products/services you should include in your application and which ones should be excluded; and
what is the correct filing basis for their application?

If you don’t understand the legal consequences of each of these options, you’re very likely to get one or more of them wrong, which will impact your brand protection.

Further, you’ll also be required to swear to the truth of specific statements about the choices in your application. If you get any of them wrong, your application may be unenforceable.

These are just some of the reasons why DIY applications are 50% less likely to succeed at the USPTO.

5. File a Trademark Application for Your Product Name

After you’ve had a trademark search performed and are confident that your product name is available, the next step is to prepare and file a trademark application with the USPTO.

Note: You will need to verify your identity and have a USPTO.gov account.

You will need to provide the USPTO with precise information, including:

The legal owner and user of the product name
The legal use basis for your trademark application
The products and services with which the product name is used (or will be used)
Proper legal evidence of your use of the product name (not every use qualifies)

6. Navigate the application process at the USPTO

Working with a trademark attorney can help ensure that your application is complete and correctly filed, to avoid further delays. – mention strategic calls here

Do you need help with your trademark?

7. Use the ® Trademark Symbol with Your Trademarked Product Name

Using a trademark symbol is an important signal to consumers (and the competition) that your product name represents your brand.

There are three trademark symbols. They are:

the letters TM
the letters SM, and
the letter R in a circle — ®

The letters TM are a trademark symbol for unregistered trademarks (marks for products like shoes or computers).

The letters SM are a trademark symbol for unregistered service marks (marks for services like legal services).

Select a strong, protectable name.

The key to getting a Federal trademark is to first select a name that’s a strong trademark.

Trademarks are not created equally. There are different kinds, and some are more effective and easier to protect than others.

The best trademarks are distinctive and memorable. They are strong because they excel at reflecting brands.

Some trademarks, however, are weak because they only describe aspects of products or services. Others are legally unprotectable, meaning anyone can use them.

Start by trying to include an invented word (Exxon^®). If that does not work, then …
Try to use a word that has no association with your products or services (Amazon^®). If that does not work, then …
Try words that allude to your products and services (Netflix^®).
Always try to avoid away from using only words that:

- are generic for a product or service;
- are often used in business or industry;
- only describe characteristics and features; or
- are already part of everyday speech.

If you don’t know whether your mark is arbitrary (strong) or descriptive (weaker), you may be better off consulting an experienced trademark attorney. In any event, knowing the kinds of trademarks is very important. Otherwise, you could be wasting your time and money.

Check the availability with a trademark search for similar marks.

The next step is to determine if your product name has been trademarked by anyone else. This is because a lot of logos are already trademarked. So, you may want to run a trademark search of the Federal trademark database to find exact and close matches. It can also be useful to conduct Internet searches.

These searches aren’t as straightforward as inputting your product name and hitting search. Exact and similar trademarks used by other businesses are relevant to the Federal registration of your trademark. So, too, are misspellings, similar-sounding words and spellings, and foreign translations.

The objective here is to make sure that your product name is not similar or easily confused with someone else’s mark.

For all of these reasons, and others, it’s usually best to have an attorney run your trademark search.

Collect your information and decide on a strategy for your Federal trademark application.

Applying for a Federal trademark is more than just filling out online forms. That is the easiest part of the process.

The preparation of a new trademark application begins by making some tactical decisions about the protection for which you will want to apply.

When you apply for a Federal trademark, you start a Federal legal proceeding – and it can get complex in a hurry. The Federal trademarking process involves making dozens of legal decisions and judgment calls. Plus, these decisions and judgment calls are interrelated, and some wrong choices can sink your application from the start – without you even knowing it. So, the most successful applicants start the application process with a strategy.

For starters, you’ll need to decide:

what is the best format for your mark – is a composite mark better than standard characters? Will you need a “drawing”?;
which products/services you should include in your application and which ones should be excluded; and
what is the correct filing basis for their application?

If you don’t understand the legal consequences of each of these options, you’re very likely going to get one or more of them wrong, which will impact your brand protection.

Also, every application must be filed in the name of the owner of the mark. The owner may be an individual, a corporation, a partnership, or an LLC, for example. The right choice depends on several factors. If you get this wrong, you’ll need to refile the application and start again.

Further, you’ll also be required to swear to the truth of specific statements about the choices in your application. If you get any of them wrong, your application may be unenforceable.

These are just some of the reasons why DIY applications are 50% less likely to succeed at the USPTO.

Prepare and file your trademark application with the United States Patent and Trademark Office (correctly).

Every application starts a Federal legal proceeding, involving countless U.S. Patent and Trademark Office rules and regulations. These rules and regulations impact EVERY aspect of a new Federal trademark application. And, you’ll be required to comply with them even if you don’t know or understand them.

Also, the application system uses trademark jargon and “terms of art,” which are words that have specific meanings only in the world of trademarks.

Here, it is important to understand that not all applications result in registrations. The USPTO severely limits the types of changes you can make to an application after it is filed. So, mistakes during submission can easily sink an application.

Read More: Why you should consider using an experienced trademark attorney.

Start using your mark and use it with the right trademark symbol.

Using a trademark symbol is an important signal to consumers (and the competition) that your logo represents your brand.

There are three trademark symbols. They are:

the letters TM
the letters SM, and
the letter R in a circle — ®

The letters TM are a trademark symbol for unregistered trademarks (marks for products like shoes or computers).

The letters SM are a trademark symbol for unregistered service marks (marks for services such as legal services).

The ® is a trademark symbol for Federal trademarks (trademarks or service marks registered with the U.S. Patent and Trademark Office). The ® trademark symbol is reserved for Federal trademarks only – after you have a Federal trademark registration.

7. FREQUENTLY ASKED QUESTIONS

1. Can product names be trademarks?

2. Does a trademark protect a product name?

Yes. A trademark typically protects brand names and logos, including product names, when they are used on goods and with services.

3. Do you trademark or copyright a product name?

4. Does a trademark protect a product name?

Yes, a trademark protects a product name. Trademarks protect brand names and logos, including the names of products. That is why you can trademark a product name.

Trademark law protects a product name from being used by other businesses. This is to ensure that customers can easily differentiate between products and know which company created the product. If another business were to use the same product name, it could create confusion among customers and lead to them purchasing the wrong product.

5. When should you trademark a product?

You should start the process to trademark a product as soon as possible after you form your DBA, LLC, or corporation. The next best time to trademark a product name is as early as possible before you launch your product. By filing for a trademark well before launch, you can be certain that your product name is protected once you begin commercial sales. The worst time to start the trademark application is after launch because your product will be sold without full brand protection.

Ideally, the best time to think about trademarking a product is from the very beginning—ideally, when you’re choosing your business name and logo and forming your LLC, partnership, or corporation. The next best time is as soon as you decide on a product name or logo. You do not have to wait until you start selling your product! In general, it is a good idea to trademark a product before it goes on sale to the public, as this will give you the greatest level of protection against infringement.

If you are unsure of whether you should trademark your product, you can always consult with an experienced trademark attorney who can help you assess your situation and make the best decision for your business.

6. How do I trademark a product name?

7. What are the benefits of trademarking a product name?

There are several benefits to trademarking a product name, including:

It can help you establish and protect your brand identity.
It can help you distinguish your products from those of your competitors.
It can help you build customer loyalty and goodwill.
It can give you legal recourse if someone else uses your product name without permission.
It can help you avoid costly disputes down the road.

TAKE THE NEXT STEP

The next step toward LEGALLY owning your product name?

We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting your product name, we invite you to book a FREE brand protection strategy session with us here.

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

PART I: THE BASICS OF TRADEMARKS FOR PRODUCTS

What is a trademark?

Where do you get a trademark for your product name?

What kinds of product names can be trademarked?

PART II: WHY YOU NEED TO TRADEMARK THE NAMES OF YOUR PRODUCTS

Top Six Reasons to Trademark a Product Name

Top Four Risks of Not Trademarking A Product Name

PART III: HOW TO TRADEMARK A PRODUCT NAME

1. Choose a unique and protectable brand name for your product

2. Hire a trademark attorney for your product trademark

3. Perform a trademark search for the name of your product.

4. Collect Information and Decide on a Trademarking Strategy

5. File a Trademark Application for Your Product Name

You will need to provide the USPTO with precise information, including:

6. Navigate the application process at the USPTO

7. Use the ® Trademark Symbol with Your Trademarked Product Name

Read more: Read our guide to trademark symbols here.

PART IV: WHEN TO TRADEMARK A PRODUCT NAME

PART V: HOW TO PROTECT THE NAME OF A PRODUCT

PART VI: FAQS ABOUT TRADEMARKING PRODUCT NAMES

1. Can product names be trademarks?

2. Does a trademark protect a product name?

3. Do I copyright or trademark my brand name?

4. How do I trademark a product name?

5. What are the benefits of trademarking a product name?

You DO NOT need to understand it all to get ready.

1. Understand the concept of the Metaverse

2. Watch for opportunities to advertise on Meta (Facebook)

3. Raise brand awareness or promote a product with your own NFT

4. Learn how to create (or buy) virtual reality (VR) content

5. Get involved in virtual real estate

6. Consider ways to gamify your brand

7. Be sure that your trademarks are protected in the Metaverse

Final Thoughts

Trademarks Protect NFTs, Virtual Products, and Virtual Services

The Rush Into The Metaverse Has Started

Metaverse Trademarks Protect NFTs, Virtual Products and Virtual Services

Examples of NFT and Metaverse Trademarks

Waiting to Trademark Your NFT or Virtual Product for the Metaverse is Risky

How to Figure Out If Your Trademark is Protected for the Metaverse

Do you have a federal registration for virtual products or services for each trademark you intend to use in the Metaverse?

Final Thoughts

Last Updated on 5 October 2022

If you are interested in learning more about NFT trademarks, we invite you to read our Comprehensive Guide to NFTs and Trademarks.

If you are interested in learning more about trademarks in the Metaverse, read our Comprehensive Guide to Metaverse Trademarks.

NFT Trademark Filings

-BY MONTH–

METAVERSE Trademark Filings

-BY MONTH–

CRYPTO Trademark Filings

-BY MONTH–

Major NFT + Metaverse Trademark Filings

Sports

Celebrities / Pop Culture

Movies / Television

Beauty

Apparel

Publishing

Music

Collectables / Toys

Retail

Food / Beverage / Restaurant

Home Improvement

Travel / Lesiure

List of NFT + Metaverse

Trademark Filings

-updated February 2022-

I. NFT Trademark Filings (by Month) (jump)

II. Metaverse Trademark Filings (by Month) (jump)

III. Major NFT + Metaverse Trademark Filings (by sector) (jump)

IV. List of NFT + Metaverse Trademark Filings (jump)

Ready to take the next step toward LEGALLY owning your NFT, Metaverse, or Crypto Trademarks?

PART I: THE BASICS OF THE METAVERSE

What does the word “metaverse” mean?

What is the Metaverse?

Features of the Metaverse

Why should businesses care about the Metaverse?

Who is trademarking brands for the Metaverse?

Footwear

Entertainment Brands