Over the past few months, there has been a slew of new U.S and foreign equivalent intent-to-use trademark applications filed for virtual goods and spaces, particular within the fashion industry. For example, this past November, third parties filed two trademark applications in connection with the Gucci and Prada logos in a range of metaverse-related arenas, including downloadable virtual goods, virtual worlds, and virtual clothing used in virtual spaces. Likewise, DKNY and Nike filed applications in connection with downloadable virtual goods, namely, computer programs featuring footwear, clothing, and accessories and for use in online virtual worlds. In December, Ralph Lauren similarly filed an application in connection with retail store services featuring virtual clothing and accessories for use in online virtual worlds, and online, non-downloadable virtual clothing and accessories for use in virtual environments. These applications and many more suggest fashion brands are ready to jump into the metaverse.
Although the “zone of natural expansion” may provide some protection for existing trademark filings that lack virtual goods and spaces, brands interested in conducting business in Web3 should consider expanding the scope of their trademark protections as it creates an important presumption of validity and ownership. Some relevant international classes include classes 9, 35, and 41. Additionally, brands should consider retaining virtual rights through licensing and distribution agreements.