The announcement of Facebook’s plans to rebrand to Meta and launch its metaverse has come with many questions about the use of trademarked fashion in this new virtual world. The metaverse, which can be defined as a virtual-reality space in which users can interact with a computer-generated environment and other users, has created new avenues for revenue for fashion retailers. For example, brands seeking to promote their trademarks in the metaverse may be able to do so through a variety of means, including virtual billboards, hosting sponsored events, and even in virtual “malls” where consumers may explore a brand’s virtual offerings. While this new world has created new ways for consumers to experience their favorite brands, it has at the same time created new avenues for trademark infringement.
After the announcement of the metaverse, Nike wasted almost no time in filing seven new intent-to-use applications with the U.S. Patent and Trademark Office for its brand’s well-known trademarks including “Nike,” “Just Do It,” “Jordan,” “Air Jordan,” the swish logo, the Jordan silhouette logo, and a stylized combination of its name and the swoosh for use on various virtual goods/services. Additionally, Nike has filed identical applications with trademark offices in numerous countries including Singapore, Switzerland, Mexico, and Canada. While the global company currently holds trademarks for each of the previously mentioned marks for several goods and services, it did not hold any trademarks for possible virtual adaptations. Josh Gerben, a trademark attorney for Nike, has elaborated on the importance of these virtual trademarks for the brand “as it will be easier and safer if they own registration for virtual goods” and also the trademark filings would add value to the company’s brand portfolio.
While Nike has been the first major retailer to start acquiring trademarks for use in the metaverse, Cathy Hackl, the Chief Metaverse Officer of the Futures Intelligence Group, believes they certainly will not be the last. Hackl claimed, “Every brand and company will need a metaverse strategy,” as she believes the metaverse will ultimately become as commonplace as companies’ having websites and social media. Companies seemed to agree with Hackl, as in the following weeks after Nike filed for its virtual trademarks, a multitude of fashion brands followed suit, including Converse, Abercrombie & Fitch, Urban Outfitters, Vineyard Vines, Free People, Telfar, and Allbirds.
While fashion brands have previously ventured into virtual worlds on different platforms before the birth of Facebook’s metaverse – including huge brands like Louis Vuitton and Balenciaga in their collaborations with video games such as Fortnite and League of Legends – there is more uncertainty around the broad metaverse and how these fashion trademarks will be policed there.
Since the exact form of infringement in the metaverse will be difficult to predict, Gerben is right in stressing the importance for brands like Nike to secure enforceable trademark protections for the metaverse. Brands that fail to secure trademarks for their virtual brands may find it challenging to combat trademark infringement and counterfeiting that is bound to happen in the metaverse.