Registering trademarks for newer technologies

Registering trademarks for newer technologies

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- Hello, everyone, and welcome to the United States Patent and Trademark Office Webinar series for experienced practitioners. My name is Mariessa Terrell and I am an attorney in the Trademarks Customer Outreach Office. I'm pleased to serve as your host today. We've noticed a marked increase in the number of trademark applications filed for marks identifying newer technologies.

So, we hope you'll find today's topic timely and interesting. Now, before I introduce our subject matter experts, I'd like to share a few announcements with you. This session is being recorded for your convenience and captioning is available. You'll be able to access the recording in about three weeks by visiting our website,

Today's presentation features a number of slides and these slides will be emailed to you after the presentation. At the conclusion of the slides, we will have time for your questions. And, you may submit your questions in the Q&A box by simply typing your question and hitting "enter." But please note that we have a record number of attendees today so it's possible that we may not get to all of the questions.

Please bear with us. And finally, please be aware that the chat thread is for announcements only. It's disabled during today's presentation. Okay.

Thanks for allowing me to run through all of those announcements. At this point, I'd like to introduce our two expert presenters. First, we have attorney Mary Munson-Ott. Since 2009, Mary has worked as an attorney in our Trademark Classification Policy and Practice Unit where she provides guidance on identification and classification practice, including the identification and classification of new technology. We also have attorney Rebecca Miles Eisinger. Since 2013, Becca has worked as a senior staff attorney in the Office of Trademark Quality Review and Training.

She is responsible for training our attorneys and staff. And, prior to that role, for nine years Becca has worked as an attorney advisor where she examined applications for federal trademark registration. Mary and Becca, we're ready for you to share the nuts and bolts of registering trademarks for newer technologies.

The floor is yours. - Mariessa, thank you so much for a lovely introduction. Hi, everybody. Mary and I (I think I can speak for Mary too), we're really happy to be here today. Our presentation today is an abbreviated version of a series of presentations that we did this past summer for the trademark examining attorneys.

The impetus for that training was the realization that many of us have trouble keeping up with the speed at which technology is changing. It's not just NTF's. But they are a great example of a newer technology that's been presenting a problem in trademark applications. So, today what I'm going to do is give us some background on these topics and then we're going to take a look at some options for describing new technologies as part of an identification of goods or services in a trademark application. And Mary is going to talk about specific guidelines for acceptable classification and identification.

I think you'll find that the US Patent and Trademark Office pretty much applies the same practices to new goods and services that they do to existing goods and services. And then in addition, I'm going to show you some examples of acceptable specimens of use for some of these new technologies. So, let's dive in. One thing I always forget is to have my cursor on the screen.

There you go. So, how much would you pay for this? Okay. If your first answer is, "How much would I pay for what?" then, you're not alone. This is an image of a crypto punk.

That's a computer generated image backed by a digital guarantee of authenticity called an NFT. Owning the NFT means you also own the original version of this image. Anybody can copy the image just like I did here. But only one person can provably say that they own the original.

So knowing that now, how much would you pay for it? Somebody you probably never met paid a little more than $11.7 million for this original art. You've been hearing and reading about NFTs for the past two or so years at this point. The craze for owning NFT backed art seems to be passing now. But our applicants are continuing

to apply for marks related to NFTs. And if this occasionally feels sort of like a train that has passed you by, don't worry, we're going to talk through some of the most pressing issues today. So we will talk about three topics. First, blockchain and cryptocurrencies: Blockchain has been around for nearly 15 years now. But,

it's the basis of so much new technology that it's worth our time to go back and revisit some of the basics. The rise of blockchain also marked the rise of cryptocurrencies which makes sense because the two are so closely connected. Let's discuss what blockchain and cryptocurrencies actually are, as well as how they show up in trademark applications. Second, any discussion of blockchain and cryptocurrency now leads to a discussion of NFTs. We're going to take a look at how they became such a big part of the conversation. And we'll try to nail down how NFTs can fit into a trademark identification of goods and services.

And then third, we're going to head over to the Metaverse and think about virtual goods. This starts with a quick discussion about online virtual worlds. That's the digital reality in which virtual goods exist.

And then we'll talk about not only what virtual goods are, but how we're seeing them travel in commerce. And finally, we're going to look at the crossover of the real and the virtual when it comes to selling in a virtual environment. Okay, our first topic is blockchain. Satoshi Nakamoto is the pseudonym of either one or a small group of really bright people who back in 2009 worked out how to build the very first blockchain database. They did that in order to support a brand new kind of digital only currency that they named Bitcoin. Why a new type of currency? Satoshi was responding to the dissatisfaction of a lot of Internet users over the need to always involve banks in their private transactions. An online transaction

always needs an authenticator to verify that, "Yes, the money is available in your account, the money has moved, and that way, the transaction can proceed and can be recorded." That authenticator is usually a bank. So why a new type? I'm sorry, that's the last thing. All right. So an authenticator is usually a bank. And yet, banks operate in countries and they operate under the laws of countries.

And of course, banks act in their own interest. The idea behind using a blockchain for a currency is that the authenticators of transactions in that currency aren't banks. Instead, they are other people's computers. Internet users who want to support the currency allow their computers to be used for the blockchain to verify that the funds are available for a transaction and to confirm that it's occurred. It's those computers working together from around the world that act as the authenticator for these transactions.

When computers act together to authenticate transactions, the record that they create is called a blockchain. Conceptually then, a blockchain is a ledger, like an accounting ledger. But it's kept entirely digitally. No hard copy of it exists anywhere. And instead of pages, it consists of blocks of transaction data with each transaction encrypted in a way that's so complex, it's extremely unlikely that a transaction could ever be altered or faked. And not only is every transaction validated with encryption, but the blockchain itself is even less vulnerable because it doesn't reside in one place. The whole blockchain is distributed. Meaning that

it's kept on the computers of willing blockchain users. Even if you could alter the blockchain record on one user's computer or even on a number of user computers, the overall integrity of the blockchain wouldn't be affected. Plus, when a new block of transactions is validated, it contains not only a record of all of the transactions in that block, it also contains a unique identifier code for the previous block of transactions that was validated too. That's how the blocks are linked.

Every block contains a piece, a cryptographically unique identifier for the block that preceded it. So it's blocks of data chained together, a blockchain. Another core characteristic of blockchains is that while the data lives on a bunch of different computers, anyone can look at the data at any time. All you need is internet access and you can look at anything on a blockchain. I decided I wanted to look at block number 732573 on the Bitcoin blockchain, the blockchain that records every Bitcoin and its movement ever from day one. So the record I found included the encrypted code.

It included statistics about the block as a whole, and it lists every single transaction and details of the transaction in that block. I noticed though, I didn't see any names anywhere in there. Nobody uses a name when they're interacting with a blockchain. Everybody uses a digital wallet number as their identity. Let's move on then to trademark applications. The one thing I want to point out at the start is that blockchain alone isn't considered to be a good or service.

So Mary, could you explain to us how blockchain can be part of an acceptable ID? -Sure. Thank you, Becca, and thanks everyone for joining us as well. So when we think about how to describe these newer technologies in trademark applications, I think it's really helpful to keep in mind the two most basic requirements for good identifications (IDs or ID). The ID must be limited to a single class, and it must also be specific enough to enable complete examination of the mark. And that includes analysis under Trademark Act section 2(d). So although these seem most basic, please keep them in mind because I'll keep coming back to these points.

So, getting back to blockchain. Even though blockchain is not considered goods in trade or a registerable service, blockchain can certainly be a feature of the goods, or the means for rendering a service, or the means for performing an activity. And applicants can refer to blockchain in definite IDs without creating new ambiguity. Now what I want to point out about the IDs that are on this slide, these IDs are acceptable even without the mention of blockchain, for example, "downloadable software for inventory management." Well, that's okay in class 9. And it's also okay with a reference to blockchain. That's just a detail about the goods.

The same applies to descriptions of services that incorporate blockchain. "Payment verification services" is a definite ID in class 36 and we also take it with reference to blockchain. That's just the means of performing the activity. So, blockchain technology is being used in connection with goods and services in many different classes.

And it's the function of the goods or the nature of the services that controls the classification. The reference to blockchain generally has no impact on the classification at all. Now, as we work through the ID practice in connection with each of these topics, I hope that one thing becomes clear. The ID and classification rules are generally the same.

It's really just the technology aspect of the goods and services and maybe even the marketplace that's a little bit different. I'll hand it back to you, Becca. - Thank you so much, Mary.

I thought you all might find it useful to take a look at a specimen of use. I thought it might be helpful for you to see how a specimen of use might be able to show use of the mark with blockchain related services. So, all the specimens I'm going to show you today are fictional. But I created them based on existing websites that I found in the relevant fields. So, this mark is the design of an otter with no color claim for class 41 educational services in the broadly identified field of blockchain technology. This would be an acceptable specimen for those services because it has what we would require for an acceptable advertising specimen for services.

It has the mark. It has explicit reference to the services in the ID. That doesn't mean verbatim reference. But you can tell that's what they're talking about, the same thing as the services listed in the ID. And because it includes the mark, explicitly references the services in the ID, and creates a connection, a direct association between the mark and the services listed in the ID, that makes it an acceptable specimen of use for these services. So given that I've talked a bit about how blockchain and cryptocurrency showed up around the same time, and that's because the first true Bitcoin blockchain was specifically created for a cryptocurrency that's Bitcoin.

But that's far from the only blockchain. And, I'm sure you know, Bitcoin is far from the only cryptocurrency. It's not even the only kind of cryptocurrency. So let's get our brains around what matters here.

First, for comparison, think about money as you've always understood it. Hard cash is called fiat money. The word "Fiat" always makes me think of those tiny cars that zip all over Italy.

So I'm gifting you with that mental image. Yeah, you're welcome. But when someone mentions fiat money, they mean money the way we've always understood it: dollars, and yuan, and pounds, that kind of thing.

If you want to sell me something, I expect you will be perfectly happy to accept U.S. currency from me in exchange for whatever I want from you. What I want to ask you to think about is why. Why are you happy to take U.S.

dollars from me in exchange for stuff you have that has value? When I've asked this question before, I got answers like, "Because I know that when it's time to pay my taxes, the government will accept U.S. dollars from me," Or "Because I'm confident that when I want something, somebody else will be perfectly happy to part with it in exchange for this same hard currency." All I'm trying to say is that fiat money works because we agree it works. But it works because so many people trust it. By contrast, cryptocurrency is not fiat money. Cryptocurrencies aren't issued or guaranteed by a government.

And yet, very slowly, consumers have started to trust some cryptocurrencies to the point that they're willing to pay fiat money for the cryptocurrencies. And all of this started with Bitcoin. Here's how it works, just in general.

Internet users who wanted to support this digital currency experiment agreed to let the Bitcoin blockchain use their computers to store copies of the blockchain, to verify the transactions that occurred, and to work on the "eye crossingly" complicated algorithms that are used for encryption on there. Those users were rewarded for their processing time with units of value that would be bitcoins. And then one day in 2010, so the story goes, a man paid 10,000 bitcoins for two pizzas from his local Papa John's. At that time, the value of 10,000 bitcoins was estimated at $40. It's said to be the first time that someone exchanged Bitcoin for something of real world value. As of that moment, Bitcoin isn't just a thing that Bitcoin collectors have anymore.

It's something that real people are exchanging for real goods and services. And today the value of those same 10,000 bitcoins would be roughly $170 million. But what I don't need to tell you is the value of those bitcoins changes every day because even as regular people are coming to trust some cryptocurrencies to represent real value, trust is the only thing that holds all of this together. There we go. Today there are lots of different cryptocurrencies that are backed by and tracked on different blockchains.

Blockchains is what I meant. But it's logical to break down cryptocurrency into two different kinds. It's not a world ending distinction, but it's a really helpful thing to know about. Crypto coins are the bitcoins of the world. They're meant to be used and exchanged anywhere. just like fiat money. A crypto coin is always a kind of cryptocurrency.

But, there are also crypto tokens which are sometimes used as a type of cryptocurrency but for a specific website or platform. Crypto tokens can act like money, maybe within your favorite online game, but if they're just for use on a particular platform or game or website, then you're dealing with a kind of crypto token, not a crypto coin. I'm going to give you a minute to read and digest this slide.

I know, it's a little wordy. Okay, let's move along again to how this affects trademark applications. The most important thing to keep in mind from a trademark standpoint is that cryptocurrency itself isn't a good or a service. Mary, could you talk to us about how cryptocurrency can be part of an acceptable ID? - Yes, thank you.

And you're right, Becca, That really is the key point. When cryptocurrency, or digital currency, or virtual currency, when it's just a method of payment or a medium of exchange in the same way that dollars, or euros are a medium of exchange, they are not considered goods in trade or registerable services. Now, while cryptocurrency itself is not a good or service, we can certainly think of cryptocurrency related products and activities. Examples are computer hardware and software in class 9, financial services in class 36, and computer technology services in Class 42. So we see cryptocurrency very often mentioned when describing the function of software like "downloadable computer software for use as a cryptocurrency wallet". "Cryptocurrency hardware wallets" are also in class 9.

"Financial services involving cryptocurrency" are considered similar to "financial services involving cash or other financial instruments." And the same ID and classification rules apply. The IDs must be definite and limited to a single class, something like "cryptocurrency exchange services," in class 36. So here, keep in mind the difference between "providing online marketplaces for buyers and sellers of goods and services." That ID would be in class 35. There is a distinction between that ID in class 35 and "financial exchange services," in class 36. Because cryptocurrency is not considered a good or service

that "online marketplace" ID in class 35, well, it just doesn't apply. Here's another point. Cryptocurrency can be the field or subject matter of a definite description of services, e.g., something like

"legal information services," in class 45, or "technology consultantcy" in class 42. But keep in mind that "cryptocurrency" is not an acceptable subject matter on its own. Also, keep in mind that "cryptocurrency" is not the same thing as a token of value. That's a term in the Nice alphabetical list. Those terms are not interchangeable.

And, combining those concepts, the concept of cryptocurrency and issuing tokens of value, that combination almost always results in ambiguity in IDs. Becca. - Thank you very much. One way we notice that the word, cryptocurrency tends to show up in IDs, identifications of goods or services, is in providing online non-downloadable software that you use as your cryptocurrency wallet. As you probably know, when software isn't fully downloadable by the user, but is instead intended for use online, it's properly classified as a class 42 computer service. That means we would need to see an acceptable services specimen.

This specimen is for the mark, AVARICIOUS for "online non-downloadable software," and it could be viewed in two different ways. If you look at it as an image showing the mark in the rendering of the services. [I'm sorry. what I meant to say was] You could view it two different ways.

As in, you can look at it as a specimen showing the mark in the performance or rendering of the services, or, you could look at it as a specimen that shows the mark being used in advertising the services. Both of those kinds of specimens are totally acceptable. So if it's an image for performing or rendering the services, then what we have is the mark and it's shown in association with log-in buttons. That demonstrates that there's performance going on here. If instead we look at it as advertising for the services, because it's a web page, we do have the mark. We have explicit references to the services within the text of this specimen image. And there is a necessary

direct association between the mark and the services. That's not only because the mark shows up in a way that service marks generally do, on web pages. But also, there are no potential marks here to disrupt a consumer's association between the mark and the recited services. That's why from either standpoint, this would be an acceptable specimen of use for services like these.

Okay. Let's take a minute and just revisit some key points about blockchain and cryptocurrency. First, blockchain, it's a ledger of transactions. What makes it a blockchain is that it is digital rather than physical.

It's distributed rather than being in one place like on a particular server. And it's encrypted, meaning that monkeying with the data on it would be colossally difficult. Although the term blockchain by itself doesn't identify a good or service, it can be identified as a feature of goods or services, or it might be the means of rendering services.

We also see the term, blockchain appearing as the field or subject matter of services. As long as they're otherwise acceptably identified, adding a reference to blockchain is fine and blockchain sometimes appears within the description of the function of software. So then cryptocurrency lives in the same universe as blockchain. But the two really are distinct.

Cryptocurrency is something specific on its own. It's a digital asset that exists on and is tracked by a blockchain. For purposes of trademark applications, remember that cryptocurrency isn't considered to be a good or service. It can be part of an identification when it describes the subject matter or field of services that are otherwise acceptably identified.

Plus, the term cryptocurrency can be used in describing the function of software. And if you look in the ID manuals, you're going to find more instances of specific financial service activities that relate to cryptocurrency than we can possibly fit on the slide. You can see things like "cryptocurrency, exchange services", "payment processing" and that sort of thing. All right. With blockchain and cryptocurrency fresh in our minds, let's follow this path to the next logical step here.

And that is NFTs. You might recognize this piece of digital art. The original, with this piece, along with the NFT that purported to authenticate it as the original piece, raked in a whopping 42,000 ether back in March of 2021. At the time, that was the equivalent of about $69 million. That frenzy for acquiring NFT backed original art was already in full bloom way before most of us were even paying any attention to it at all.

As you have no doubt heard before, NFT is an acronym for non-fungible token. And if you're a lawyer, you remember talking in property class in law school about what something being fungible means. Anything that can be exchanged for another of its kind, one for one is fungible. That's fiat currency, a dollar or an ounce of gold or a shipping container full of orange pulp. A fungible thing can be swapped at any time for another of its kind which means that non fungible describes anything that isn't equivalent to another of its kind.

Every single piece of real estate is different. You can't just swap in a different piece of land if this one becomes unavailable. Paintings and sculptures, those are non-fungible because no two are exactly equivalent. We can make copies of them. Sure. But we assign great cultural value to something being the original.

But verifying that something is the original in an era of perfect digital duplication has become harder and harder. But our individual desire to provably own original, unique objects has not gone away. So, enter the token. Blockchain tokens, which are pieces of data better tracked on a blockchain, don't have to represent fungible things like money.

Instead, there are also now non-fungible tokens. An NFT is a special subset of blockchain token. And it's irrevocably linked to an asset of some kind. Maybe it's a piece of digital art or a piece of real estate in an online virtual game. An NFT is meant to guarantee that the asset it's linked to is authentic because every movement of that NFT is viewable by anyone on a blockchain. So anyone with Internet access can view an NFT record of ownership, its full record of ownership, at any time.

As long as the NFT itself was minted by the asset's true owner, you know you're looking at an unassailable record of ownership for this original asset because you can see what happened to the NFT. I had never heard of an NFT when I heard about William Shatner collector cards. So this was back in the summer of 2020. And Shatner

raised $125,000 by selling packs of digital collector cards, each backed by an NFT. The cards contained images from Shatner's life: photographs, a Western Union telegraph. One of them was a dental X-ray. Now, at the time, I sort of scratched my head and wrote the whole thing off as kind of a stunt, which is why it's clear that I am not a technological visionary. Because after that, NFTs linked to digital assets in order to prove their authenticity, turned into huge money.

The world seemed to go nuts for buying NFT backed digital artwork for a while. Although that seems to have died down now. Consider, though, that a lot of what was happening was basically just speculation. People buying an original asset, not because they prized the asset, but because they were betting that they could sell it for more than they paid.

But art isn't the only potential use of NFTs. Visionary users are talking about NFTs being used to authenticate lots of other kinds of assets that are unique as well. Physical assets like paintings or handbags. But also records like birth certificates or deeds to real estate. I can really see potential there. I love the idea of being able to transfer real estate without having to pay and wait for title examination.

But no one has yet convinced me that it will actually work. And, I'm just going to let you decide what you think about it. If that were everything we needed to know about NFTs in order to deal with trademark applications, we could stop there. But NFTs can be a headache.

And here are some issues that you'll want to be aware of first. When you read about NFTs in the news and when we talk about them informally, you realize that people are saying NFT to mean not just the NFT, but also the asset it's intended to authenticate. As in Beeple's NFT, Everydays sold for $69 million. That's a a shorthand way to say it, right? What the person or people bought was not just an NFT.

What they bought was an original piece of digital artwork linked to an NFT to guarantee that it was the original. And that casual use and language, lumping together the NFT and whatever asset it's verifying, is already causing problems in trademark applications From a goods and services standpoint, an NFT is analogous to a certificate of authenticity. The certificate itself has no independent value or status as a good, and neither does an NFT. To seek trademark registration, applicants need to be precise about what their NFT related goods and services actually are. Second, there's no central or government body that controls who mints NFTs or that forces them to mint NFTs in any particular way. There's an industry standard for Nfts, and that's ERC 721. By common consent, it's how NFTs are generally constructed.

But could someone create an NFT that doesn't follow those rules? Yeah, you bet. In fact, that crypto punk that I showed you way back at the beginning of the presentation is an example of an NFT that doesn't comply with ERC 721 standards. Just like you, we are just trying to pay attention and see what happens here. Right. Mary, I see your face again. Hi. Could you tell us if there's any way to make NFTs part of an acceptable ID? - Thanks, Becca. I do realize that I'm going to repeat some of the points that you already made.

But they are very important points. So I think they are worth repeating and reinforcing. So you mentioned that we think of NFTs as similar to cerfificates of ownership and authenticity and that NFTs are not goods or services.

So even though the term, NFT is used in the media and also in everyday conversation as a shorthand for the items authenticated by the NFTs, that usage is not okay in the identification. The applicants must indicate the goods that are being authenticated by the NFT. Or they can indicate the service activity that involves the NFT. So here are a couple items to note. So first, when we're talking about descriptions for downloadable items like that crypto punk that you mentioned earlier. There are two requirements under the current U.S.

ID practice. Number one, the applicant must indicate the nature of the downloadable file. Is it an image file, an audio file, or something else? Number two, the applicant has to indicate the subject matter of the file, like sports memorabilia, or music concert highlights, or something like that. These specific details enable complete examination of the application and the mark.

The next thing I wanted to note is "crypto collectibles" and "digital collectibles." We're seeing mention of these items in many applications that are coming in and these terms "crypto collectibles" and "digital collectibles" on their own. are not acceptable because they are considered indefinite.

Again, the applicant must indicate the nature of the goods and also the subject matter. Also, keep in mind that NFTs are not only being used in connection with the digital items. They are also being used to authenticate physical items like sneakers and handbags.

Here, NFT technology has real potential to combat counterfeiting. Now we got a question in advance of the webinar from an experienced practitioner and I hope you're out there so we can answer your question for you. This question asked, Why sneakers authenticated by NFTs would need to be mentioned in the ID manual when those goods already appear to be covered by the term "sneakers," in class 25?". And so to answer that question, I just wanted to point out that the ID manual terms are intended to provide guidance and also provided as examples of IDs that would be acceptable in the trademark applications. So in this case, you're right, the term "sneakers" is okay in class 25 and then the term, "sneakers authenticated by NFTs" would also be okay because it just provides more information, more specific details about the goods. So one last note about the NFTs.

So notice that the IDs on the slide, just like the ones involving blockchain can stand on their own even without the mention of the NFTs. They are limited to a single class. and they're also specific enough to help third parties, make Trademark Act section 2(d) determinations.

And incorporating Nfts in these descriptions doesn't create new ambiguity. Becca. - Thank you so much. It was so exciting to get those questions ahead of time.

And I'm really glad that you were able to address them. Thank you. All right.

Before we move on to another topic, what we're going to do first is take a look at a specimen of use for NFT backed goods. This mark is CRYPTOPURSLEYS. It's for downloadable images authenticated by NFTs and that's class 9. Because the image shows these goods being offered for sale, we would generally approach it as an electronic point of sale display for goods. All right. To be an acceptable specimen of use for goods an electronic point of sale display needs to show the goods, or at least describe them enough that the consumer really knows what she's getting.

It needs to show the mark in association with those goods. And it needs to include sufficient ordering information to order the goods right now. This specimen meets those requirements. I also noticed at the bottom that the price is listed and there's a "buy now button" indicating that there is a place to consummate the sale right now. All right.

So now let's sum up NFTs a little bit because I know that was a lot of information. An NFT is a special subset of blockchain based token that's locked to a specific digital or physical asset. An NFT exists on and is tracked by a blockchain. For purposes of trademark applications, keep in mind that an NFT isn't considered to be a good or service in commerce because its usual function is primarily to authenticate an asset. An acceptable ID therefore needs to specify the nature of the goods being authenticated or the services that involve NFTs.

All right, time to take a left turn. All right. Let's talk about another encroachment on normal life from the online world, or I guess I should say from the virtual online world. Have you heard about any of the virtual worlds that are currently popular? My son was playing Roblox for years, and before that he went through several years of a really heavy Minecraft phase. But lately I've also been hearing about the Sandbox and Somnia and even some older virtual worlds that I'd already heard about before, like Fortnite and Second Life. So what makes something a virtual world? There are some common characteristics among them.

Virtual worlds are graphical online environments. They simulate a real environment, but they're usually not limited to real world physical laws. They're also persistent. So they continue to exist even when you're not there. And in any virtual world, players participate and interact using graphical representations called avatars. What do you do in virtual worlds? Well, mostly people go there to play games and to socialize. But people also visit virtual worlds, to shop and now sometimes to work, as well.

How does a real person interact with a virtual world? There's no one answer to that question. Different visions and experiments in virtual worlds have used different approaches to interacting with them. You might see virtual reality VR gear like goggles. You might see a picture that shows up on your cell phone screen that includes the real world, but has digital enhancements to it. That's called augmented reality or AR or some virtual worlds just have us use the equipment that we all already have: a keyboard and a screen. What I wanted to make sure I mentioned, though, is that no matter what virtual world you're looking at, the way that you interact with that virtual world and with the people in it, the other players in it, is through your avatar.

You would only be able to participate in a virtual online world if you have an avatar to do so. Anytime you try out a new virtual world, you'll need to create an avatar just for that world. If you decided to try out Roblox tonight, for example, you'd set up your account and you choose a basic avatar in any one of a range of colors. So here you go, on the slide is a very basic Roblox avatar. In most environments like this, avatars at least start out as some representation of a human. So if a basic avatar is enough to play the game or interact, then stop and consider, why does anyone add to it? Why add clothing or accessories or weapons? I asked this question of a bunch of people and I tended to get responses like, "well, to make my avatar look cool," or " make my avatar represent me a little more,"

or " make my avatar immediately recognizable to other players in the game." And then, one person reminded me that, "well, if my avatar has weapons, I can play this game better."

Okay, yeah, he won that. Now, those objects that users obtain for their avatars that are only for use within an online virtual world are called "virtual goods." A consumer gets them generally by obtaining them as add-on items within that particular virtual world. In a game world, you might earn virtual goods for your avatar by playing successfully. Or successful play might earn you in-game money that you can spend on avatar enhancements, accessories, or weapons, or even for decor for your avatar's living space.

The screenshot here is from Roblox, where players earn units of value called Robux by playing or by paying for Robux using fiat money. So if Roblox can charge US dollars for Robux, then there is money to be made here. And if there's money to be made in virtual goods, doesn't it make sense that there'd be even more money to be made with virtual goods that bear popular trademarks? The players in virtual worlds often want their avatars to sport the kinds of branded merchandise that lend cachet in the real world. That branded merchandise often looks just like its real world equivalent.

As consumers, we're starting to see some trademark owners take note of that. For example, there is an area in Roblox called Nike Land, and users can go there and buy Nike brand virtual goods for their avatars to carry or where. Roblox players have also had opportunities to buy Gucci branded accessories. When I tried logging into Roblox myself, I found that plenty of virtual goods were for sale bearing trademarks. But it looked to me as if many of those virtual goods were not being offered by the real world brand owners. Do you think a Roblox player knows or is concerned about whether his virtual jacket really comes from the same source as his real world jacket? I wish I could tell you the answer to that question, but the truth is, I don't know what a consumer expects right now.

I have a pretty good idea what brand owners would expect. I respect that. And in the coming years, we're going to continue to watch these developments and we can probably expect some significant legal developments in this area Mary. Hi

again. Can you tell us how an applicant can acceptably identify virtual goods in a trademark application? - Right. And Becca, just as you're expecting developments in that particular practice area, there's also potential for developments in ID and classification practice relating to virtual goods. But for now we are applying the existing guidance. When crafting IDs for virtual goods, there are really two key considerations. The first is whether virtual goods are downloadable or in an online non-downloadable format.

And second, what is the subject matter or the type of goods. Specifying the virtual goods as downloadable limits the ID to a single class, class 9. And it also helps direct the applicant to the current options within that class. Under the current guidance, the applicant could indicate that the downloadable goods are computer programs, or image files, or both. The applicant must also indicate the type of goods.

Is it jewelry, or sunglasses for your avatar, or is it furniture for your virtual living room? Here, the applicant should be careful to avoid indefinite wording like accessories and other broad wording. That wording is too broad to enable examination of the mark. And we see this error very often. It comes up when specifying "virtual goods" and also the "retail store services featuring virtual goods" which we'll talk about in a little bit later in the session. So this requirement to indicate the type of virtual goods also applies to online non-downloadable virtual goods which are classified in class 41 based on the overall nature and purpose of the activity, which is entertainment. So this term that you see here in class 41, this was added to the ID manual in mid 2009. The U.S.

has proposed adding it to the Nice classifications alphabetical list. Now, the International Bureau and other member countries of the Nice Agreement have also made proposals related to virtual goods. And so we're expecting this to certainly be an interesting topic of discussion at the upcoming Nice Committee of Experts meeting in the spring. So one last note, keep in mind that not all virtual goods are necessarily going to be goods in trade or registerable services. So some virtual goods might just be features of downloadable computer game software. So when the applicant is thinking about filing a trademark application, be sure to take a look at potential specimens and ensure that the mark is being used as a source indicator for the virtual goods and not just a feature of the game software.

Becca. - Thank you, Mary. All right. Let's take a look at an acceptable specimen of use. This is for the word mark, JAX for fully downloadable virtual goods in class 9. Similarly, I'm going to try that word again. Similarly to the NFT specimen we looked at a few minutes ago, this is a screenshot of an online page where the goods are being offered for sale.

So quick remember the requirements for an acceptable point of sale displays specimen. Yeah. Okay. So I would note the appearance of the mark in connection with the virtual goods, both images and textual descriptions of the virtual goods, and the information and ability to order them now, by clicking that "get" button that lists the price in Robux. And I also noticed that when I created this specimen, I didn't think that a trademark examining attorney would necessarily know what it was they were looking at if they just looked at this specimen on its own.

So I included a very brief, because it was for a slide, a very brief specimen description explaining what was going on in the specimen. Those are so helpful in trademark applications. All right. This next slide used to have this gorgeous photo of an elephant on it because I think of this specific topic as the elephant in the room.

Any lawyer I talk to about this asks me, "Are we changing what we're citing under Trademark Act section 2(d) on the basis of these emerging virtual goods that can so resemble their real world counterparts?". As you might be aware, we have no controlling case law yet that found real world goods and their virtual counterparts to be related in commerce for section 2(d) purposes. But, when an examining attorney's research shows that the real and virtual goods in question are related in commerce, then she's also going to consider the similarity of the marks, and she'll make an evidence based decision whether a refusal is appropriate. The US Patent and Trademark Office is actively monitoring what goes on because, of course, we would like to see developments here just as much as you would.

So here we are at the intersection of the real and the virtual. Consumers are starting to see more instances of standalone virtual retail environments for buying real world goods like the bottles of perfume in this image. On the other hand, most virtual goods are offered within online virtual worlds. And it's becoming increasingly common to see third party marketplaces within virtual worlds featuring branded virtual goods.

So let's start with real goods. for those of us who are not online gamers. There are now virtual environments for browsing and buying real goods. Last Christmas, for example, World Market tried out a virtual online store for pandemic weary shoppers who just wanted to walk through a holiday store again.

You remember feeling that way, I'm sure. You can see in this image, the snowflake icons. 915 00:59:30,800 --> 00:59:32,160 You would use your mouse or your finger on a touch screen to click on one of those items to put it into your virtual cart for real world delivery. Another sector that's starting to offer real goods in online virtual environments is high end luxury goods. I found a Ralph Lauren fashion store where an avatar with your measurements can try on virtual versions of real Ralph Lauren clothing that you can buy and wear.

Contrast that to the kind of retail store services we seem to be seeing with virtual goods. Those services are often rendered entirely within an online virtual world like that Nikeland store in Roblox that I mentioned. There is an image here of an avatar actually in the Nikeland store that sells Nike brand virtual goods.

As we edge closer to a Metaverse kind of experience where a single avatar can move between different online virtual worlds, I would expect that we'll see more and more brands set up shop in virtual worlds just for their own branded virtual goods. And online retail store services can be identified to cover scenarios like these. Mary, how can applicants identify these types of retail services? - Well, Becca, currently we are thinking of these activities as online retail store services rendered in a virtual environment or a virtual world in class 35.

So keep in mind the US requirement for specifying retail services. So the applicant must indicate the format of the retail service. In this case, store is the format.

And then the applicant must also indicate the type of physical or virtual goods featured in that store, e.g., whether it's clothing, cars, or furniture, that sort of thing. So again, the ID should be as specific as possible and please avoid that indefinite wording, "accessories" and other broad wording. Again, those particular details help third parties make decisions about likelihood of confusion. Short and sweet, Becca. That was great. Thank you.

All right, so let's stop briefly just to take a look at what an acceptable specimen might look like again, for the mark, JAX for "retail store services that offer virtual goods." This is an advertising specimen which is typical for retail store services. An advertisement for services needs to show the mark.

It needs to show the mark in direct association with the services. And it needs to make explicit reference to the services listed in the ID. Again, not verbatim, just directly explicitly referencing them.

So in this case, the listed retail services are supported, I think by the phrase, "Browse the Jax showroom." And that's how I can see what's going on here. All right, one last time.

Let's stop and recap things that we've talked about. So we're going to talk about virtual goods and virtual retail services. Virtual goods are the objects that are used by players in online virtual worlds, especially by their avatars. They can be identified in an application in class 9 when they're fully downloadable to the user or in class 41 as an entertainment service when they're not. We're seeing virtual retail services in two primary ways at this point: An online retail store that sells real goods using a virtual shopping environment, and an online retail store that sells virtual goods generally offered entirely within an online virtual world.

And what we need to know in an ID in order for it to be acceptable is what real and virtual goods are being featured. Oh, and Mary asked me to throw in a reminder on this last slide about the word "accessories." We see it so often in IDs and it's almost never okay unless it's clarified to be specific.

- All right. That's the end of our overview, and we really hope that it's helped you to understand some of the newer and emerging technologies that we're seeing in the trademark applications you file. And it is currently 3:04 pm ET which is wonderful.

That gives us time to answer some of the questions. And it sounds like a bunch of questions have come in on the Q&A. Mariessa, do you have anything that's come in via Q&A that we might be able to talk about? - Yes, I do. And before we jump into that, we want to just thank you for that wonderful presentation. And here are just a few rules to govern our Q&A discussion. So please remember, we cannot provide legal advice and we cannot comment on the registerability of any marks, including the validity of any registrations. Also

we can't discuss IDs contained in live applications as those are still being examined. All right. So let's get to question number one. This one is for you, Becca. - Okay.

-The first attendee has a question about a statement made in conjunction with the NFT slides. So what is indicated by the mark, Opensea? I don't know if you remember that slide. - on the specimen, you mean? Okay, the CRYPTOPURSLEYS specimen? - I think it was the one with the little bear. -That's my family's mascot. Pursley is a stuffed cat and she has been

with me to more countries than I. And yeah, we like to dress her up when we go on vacation. Okay. - So the question has two parts. What's indicated by the mark? And then number two, does it matter that the price is given in ether rather than in U.S. dollars? So we've got a two part. -Okay, That's great. Wow. Okay. I'm kind of embarrassed.

I didn't mention anything about that the first time around. All right. First of all, Opensea, up here, appears as service marks often do, to indicate the services of a of a marketplace.

Opensea is a marketplace for buyers and sellers of NFT backed collectible images, and NFT backed images, and that sort of thing. Opensea is one of the two marketplaces that you actually might have heard of. The other one being Coinbase NFT probably. So in this case, yeah, I would not have worried about Opensea being in the mark. It doesn't interfere with my association

between the goods that are pictured and the mark for them. Okay. Second part of the question, NFTs themselves are generally located on the Ethereum blockchain. And what has become standard in the industry is for people to exchange NFTs for value in the way of ether, Etherium, the crypto token that is used on the Ethereum platform. There's not a problem here with having the price listed in ether, partly because the US dollar amount is also listed right there. There's no question about what's being quoted for it.

And I realize there are times when when a specimen shows up and the currency listed on it, the price of something, is listed not in U.S. dollars. And that can trigger an inquiry. Like, are we sure that this is something that's actually going around in U.S.

commerce? And in this case, we don't even have that problem because the price is also listed in dollars. Oh, gosh, I really hope that answered the questions. -I think so.

Thank you. - Good luck. - All right. Mary. Now this one is for you.

The next question references a statement that was made about cryptocurrency. Specifically, it was said that cryptocurrency and tokens of value are not the same. But can you explain more, please? And what exactly are tokens of value? - Okay, Mariessa thank you so much.

This question comes up a lot and we see this blending of the term issuance of tokens of value and the concepts of cryptocurrency and digital currency. We see it very often in trademark applications. And I think it's a real source of confusion. And so I'm glad to have the opportunity to talk a little bit more about it. So just for background, this term "issuance of tokens of value" appears in the Nice alphabetical list in class 36.

And that term, it's been there forever, right? So I think it first appeared in the sixth edition of the Nice classification. The sixth edition went into force in 1992. So think about it. It's been there maybe even longer than some of our newer experienced practitioners have been alive.

Right? So at that time, in 1992, the dictionary definition of "token" was limited. The dictionary definition or the one that was relevant for that alphabetical list term at the time (and it still is) can be found in the dictionary as "vouchers that are exchangeable for goods or services." So when we look to that Nice alphabetical list term, we have to reference back to the relevant dictionary definition at the time in order to understand its meaning and interpret it. So we generally understand that term "issuance of tokens of value" to refer to the exchange of money for a voucher that can then be exchanged for goods and services.

So let me give you an example. I'm thinking of things like subway tokens, or arcade tokens, or even things like a prepaid restaurant gift certificate. So you're going to the kiosk in the Metro or you're going to the restaurant and you're spending money to buy the coin or the voucher that you can either use yourself or give to someone else who can then turn it in for goods or services.

So with that long winded explanation, you can see that there is a difference between this medium of exchange, whether it's cryptocurrency, or virtual currency, or dollars or euros. There is a difference between that and the "token of value." The terms are just simply not interchangeable. And so I brought up this point when talking about the slides, just because we see this blending so often. And the blending almost always creates ambiguity. So so what are we doing about it? So the U.S. has made proposals to change the Nice alphabetical list to clarify that Nice alphabetical list term.

And we hope that these changes really discourage the misuse of that term in connection with physical and digital currency. So the Nice committee of experts will consider the U.S. proposal in the spring. But keep in mind that for now that term is in the Nice alphabetical list. And it also, for now, appears in the ID manual. So one last note, just keep in mind that although technically that wording is acceptable because it appears in the ID manual as of today, that wording does not describe cryptocurrency, which is not considered a good or service.

I hope that helps. - It helped me. It helps. -It comes up a lot. - Yes, it's very thorough. It's a great, great explanation and thank you for that and for giving us some of the background to help us better understand, you know, why we are being so specific here when something else seems to already be in place to help.

So thank you for that. Okay, here's another question. And this one is for you, Becca. Does the sale of goods for cryptocurrency rather than for U.S. dollars, count toward those goods being sold in commerce? And this particular attendee says that they bought some NFT backed collector cards like the William Shatner ones and always had to pay for them in ether.

Does that help you understand that question? -Well you saw how I deftly sidestepped the question. But you came over to me. All right. The important thing, I think, to take away is that the definition of use in commerce hasn't changed just because technology has changed. Use in commerce is still defined as commerce that occurs, I'm sorry, that is lawful goods that are moved around in commerce, and commerce that Congress may lawfully regulate.

I know that's still a tiny, tiny bit of a non-answer. But the thing is, I don't want to offer legal advice, But I want to make sure everybody has the legal tools to analyze that in the situation that's sitting in front of them. And what do you think? - Thank you Attorney, Attorney Becca. Thank you, good answer. Okay. All right.

We've got one one other question that we want to ask, and this one's for you Mary. - You mentioned, this is the attendee speaking, you mentioned or talked about virtual goods and gave examples in Class 9 and Class 41. Okay What about virtual services? Are virtual services always classified in the same class as the real service? - Okay, that's really great question. So give me a minute to get my thoughts in order. So the class you're right, we did address virtual goods very, specifically and we did not address virtual services except for these online retail store services featuring physical and virtual goods.

So a couple of things, the Nice classification provides no guidance on the classification of virtual services today. So as a result, when US Patent and Trademark Office sees virtual services in trademark applications, we are going to consider and analyze the services rendered in a virtual world on a case by case basis. And we are going to classify them according to the nature of the activity. So how are we going to analyze the nature of the activity or determine the nature of the activity for classification purposes? I think that there are really two key considerations.

And so the first one is whether the virtual service is the same activity in the virtual world as it is in the real world, like the retail store services. Right? Or whether the virtual service is just like a simulation of the service in the real world. So it's not really happening. Another way to think about it is whether the customers are getting the same benefit. Right?

So the avatar walking into the online retail store and purchasing the virtual shirt or even better example is, you know, you're able to view the physical items in the virtual retail store, you're able to purchase it and it shows up at your front door. You're getting the same benefit as you would from a brick and mortar retail store. But then we think about something like virtual restaurant services. The the avatar walks in to the virtual restaurant and eats a virtual hamburger. Well, there's really no providing of real food or drink involved. And that's a provision from the Class 43 heading, providing food and drink.

So so we think about two things. We think about whether the activity is the same activity in the real world and in the virtual world. We also think about whether the customer is getting the same benefit from the virtual services. And that's really how we determine the nature of the activity. So I kind of walk through the mental gymnastics to say all of this that the U.S. is proposing to incorporate guidance into the Nice classification session, to provide guidance to national offices and also to users on the classification of virtual services.

And what we've proposed is classification of virtual services in the same class as the r

2023-01-21 17:21

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