trademarks Archives - ARTAEV AT LAW PLLC

Luxury goods company Gucci recently bought a plot of LAND in the Sandbox Game, an Ethereum-based play-to-earn game. This LAND is a virtual real estate plot (in the form of an NFT or non-fungible token) where Gucci plans to sell in-game clothing and collectibles. As futuristic as this seems, Gucci is not the only major company looking to get into the Web3.0 space. Walmart, McDonalds, Panera, Victoria’s Secret, Nike, and L’Oréal are just a few of the big players that recently filed trademarks specifically to protect their intellectual property in the Metaverse.

Nike has become particularly active. The company created a Nikeland experience in the popular Roblox game world (along with companies like Vans, Chipotle, and Hyundai, which also have staked out territory on Roblox). Nike also recently acquired RTFKT, a studio that specializes in NFT development and in January 2022, Nike announced the formation of Nike Digital Studios to create and deliver Metaverse and blockchain-based user experiences. Additionally, Nike has filed for dozens of trademarks to protect its virtual brand, including the use of its name and logo in online art, virtual goods, video games, and avatars. With a multi-billion dollar company like Nike trademarking dozens of its NFTs, many game developers, NFT collectors, traders, crypto bros, and others wonder whether they, too, should file for trademark protection within the Metaverse for their brand.

Do Gaming Developers Need Trademark Protection?

Absolutely. Games, gaming, and software in general are highly-competitive industries. Unfortunately, there is not much stopping a third party from copying your design and profiting off of it. This can create – not only marketplace confusion – but irreparable damage and dilution of your valuable brand. This can happen to companies big and small. Additionally, if you fail to trademark your game, brand, logo, catchphrase, etc., your competitor can come in, copy your brand, and then accuse you of violating their rights. While it is possible to file for retroactive trademark protection and win eventually, the easiest (and cheapest) protection is filing a trademark right away.

Do I Need to Trademark my NFT?

Yes. It is essential for you to trademark your NFT in order to protect it from copycats. The United States is a first-to-use country, which means your NFT will already have some automatic protections after minting. However, it would be very tough protecting your unregistered “common law” trademark in the worldwide NFT marketplace. Additionally, it would be very difficult to defend an unregistered NFT trademark in any sort of legal dispute should a third party copy your idea. Filing a trademark with the USPTO ensures validity and protection within all fifty states.

Trademarking your NFT creates a brand identity that is uniquely yours. Trademarking a unique slogan, logo, or design can be a valuable marketing tool for you going forward and add tremendous value to your project. After all, intellectual property rights are what you actually own when it comes to non-physical property like NFTs (and software or computer code in general).

Copyright is another important intellectual property right for NFT owners, users, buyers, and sellers. For example, it is critical to ask what rights you are actually buying when purchasing an NFT? Is there an agreement to transfer the copyright? A license? Nothing at all? Lack of clarity in the NFT transfer process can and will lead to litigation, more so as NFTs become more and more widespread.

How Do I Protect my NFT Internationally?

You can protect your NFT internationally, provided that you also apply for international registration during your initial trademark filing. Under the Madrid Protocol (which is an international treaty for the uniform protection and registration of trademarks), a registration through the USPTO can also be registered in other countries with a single application.

What is a benefit of international registration? International registration allows you to use a foreign country’s laws and judicial resources to enforce your mark in that country. A USPTO registration still allows enforcement through a U.S. based court, even if the infringer is in a foreign country. However, even if you prevail, you might not be able to enforce the U.S. court’s judgment abroad. An international trademark registration opens up a number of other enforcement options. If you are interested in international trademark registration, this is something to discuss at your initial consultation.

What Types of Things Should I Trademark?

Here is a non-exhaustive list of items that could potentially qualify for trademark protection:

Avatars
Logos
Game Name or Gaming Development Company’s Name
NFTs
Virtual Goods (avatar skins, digital art, etc.)
Color Schemes
Particular Sounds (The coin grab ding from the classic Mario Brothers game comes to mind here.)
Slogans

What Cannot be Trademarked?

The United States Patent and Trademark Office (USPTO) has a set of guidelines that lists some of the following reasons for trademark rejection:

Likelihood of Confusion – If you create a game called GranD Turismo 7, you could not trademark that name because people could confuse it with Gran Turismo 7, the newest addition to PlayStation’s highest selling video game franchise. Sony owns the trademark to protect against competitors who seek to profit off of its name recognition by creating a similarly named game. Thus, you cannot trademark GranD Turismo 7.
Merely Descriptive and/or Intentionally Misleading – For example, you can’t trademark the words “fun and entertaining.” Even though your game is both fun and entertaining, these only describe the game itself and don’t necessarily make your game unique, so you can’t trademark them. Likewise, the USPTO will reject your trademark if it is intentionally misleading. For example, if your game’s name is “Play with Cryptocurrency,” but the game does not play with cryptocurrency, the USPTO reviewer could consider this game name intentionally misleading and deny your trademark.
Primarily a Surname – For example, Smith’s Play-to-Earn Game is primarily a last name (and merely descriptive) would not be suitable for a trademark.

How do I file a trademark for my game or NFT?

Whether you’re filing a trademark for an NFT, a digital avatar, a slogan, or your business name, Artaev at Law has the professional expertise to help you do it right. Artaev at Law, together with the specialized trademark attorneys at Mighty Marks, now offers a fixed fee, all-inclusive trademark service. Contact Dan Artaev at dan@artaevatlaw.com for additional information.

Disclaimer: This guide is for general informational and promotional purposes only. Nothing herein constitutes legal, investment, or tax advice. Every situation is different and faces its own unique set of challenges. Do not take any action or sign any contract until you have obtained specific guidance from a qualified professional. Any link to or reference to any specific project is not an endorsement of or validation of that project and is for solely informational purposes.

Yes! A trademark is an essential part of protecting your business and is especially critical for high-tech innovators in the competitive gaming industry. Best of all, a trademark registration does not have to be expensive or time-consuming. Artaev at Law has partnered with the expert trademark attorneys at Mighty Marks to offer a fixed fee, all-inclusive trademark service.

But what is a trademark exactly? And why do you need one? Do you need one now or later? Can you rely on a U.S. trademark in other countries? Read on:

So what is a trademark?

A trademark is your brand. It can be the name of your company or your product, a slogan, or a logo. Designs or other unique brand elements can also be trademarked. Trademarks, along with patents and copyrights, comprise valuable company intellectual property rights that distinguish and protect your unique product and innovation. The purpose of trademark law is to prevent brand confusion – for example, to stop unscrupulous competitors from copying your brand name and misappropriating your customer goodwill. In the highly competitive gaming space, this is particularly critical, and as explained below, a registered trademark is essential to an effective legal response.

How do I pick a trademark?

There are different “strengths” of trademarks that vary as to the level of protection they provide. In general, the law does not favor trademarking generic terms or product descriptors. For example, if you made a solitaire game and called your game “Solitaire,” your trademark application would likely be rejected. Descriptive marks are those that literally describe the product – for example “Fun” puzzle games or “Challenging” platformers. These descriptive trademarks generally cannot be registered unless they have acquired a secondary (distinct) meaning.

Suggestive marks are those that are not merely descriptive, yet hint at the nature of the product. For example, the name “Playstation” suggests that the brand is home gaming console – and is sufficiently distinct from the generic or descriptive category of marks to be given protection. The strongest category of trademarks are arbitrary and fanciful marks. Arbitrary marks are those that use a word out of context or to describe something completely different than the word’s ordinary meaning. Blizzard to describe a software company is a good example. Blizzards are weather phenomena that have nothing to do with games – and therefore the mark “Blizzard” has acquired a distinct, protectable association with computers. Fanciful (or “coined”) marks are completely new words that have no separate meaning other than their brand. For example, NVIDEA graphics cards or perhaps the xBox home console (although it could be argued that xBox is suggestive.)

Experienced trademark counsel can assist with choosing the right trademark for you and evaluate strengths and weaknesses.

Why do I need a trademark and do I need it now?

Early registration translates to stronger protection.

Games, gaming, and software in general are highly-competitive industries. Once you have your game or product out there, there is not much precluding a competitor from blatantly copying your design and profiting off your hard work. In the wrong hands, your brand can suffer irreparable damage and dilution of your business reputation. For example, if you have a game called Minecraft that you painstakingly developed, and someone copies your game and calls it “MineRcraft” what are you supposed to do? What if MineRcraft is a terrible product, but customers mistakenly leave negative reviews for Minecraft? Or worse – what if MineRcraft takes off and becomes more popular, simply because of your investment into the original game?

Another nightmare scenario for any developers is receiving a cease-and-desist from a competitor attacking your brand. Trademark registration with the USPTO is critical evidence in any sort of priority dispute that may arise. Also, while it is technically possible to register a trademark and obtain priority after-the-fact (retroactively) – it is much cheaper and simpler to do it at the outset. Therefore, it is best practice to file for a trademark registration as soon as possible. The benefits of a properly registered mark far outweigh the negligible costs.

Can my trademark protect my brand in other countries?

Yes, provided that you also apply for international registration. The USPTO provides the forms and application process for an additional fee. Under the Madrid Protocol (which is an international treaty for the uniform protection and registration of trademarks), a registration through the USPTO can also be registered in other countries with a single application.

Want to know more? Contact Dan Artaev by email or call or text with any questions.