A couple of pending trademark applications for registration stand to shed some light on how the U.S. Patent and Trademark Office and potentially, Nike, are approaching web3-focused trademarks. This time last year, gamified non-fungible token (“NFT”) marketplace Tacvue filed a trademark application for a mark that it intends to use in connection with the creation of “an on-line community for gamers, NFT gurus,” etc., in Class 42. The trademark at play: “Just Dao It.” Fast forward to February 2022, and an unrelated entity, a blockchain tech service provider called BLOCKS DAO, filed an application of its own, claiming actual actual use of the “Just Dao It” mark on “on-line non-downloadable software for enabling users to electronically create, exchange, store, send, receive, accept and transmit … NFTs based on the blockchain technology, smart contracts, and DAOs” (Class 42).
The two DAO – or decentralized autonomous organizations – centric trademarks are potentially slated for a face-off, with U.S. Patent and Trademark Office (“USPTO”) examining attorney Caroline Wood alerting BLOCKS DAO in an Office Action in September that while she had not found any “similar registered marks” that would bar registration of its mark, she did come across a trademark application that was filed before BLOCKS DAO’s application that could stand in the way of a registration. That previously-filed application was lodged by Tacvue. In the non-final Office Action that she sent to BLOCKS DAO on September 20, the USPTO examiner stated that there may be a likelihood of confusion between BLOCKS DAO’s mark and the mark cited in Tacvue’s application, and “if the earlier filed application matures into a registration, the [USPTO] may refuse registration” for BLOCKS DAO.
A potential clash between the two applications was not the only refusal basis raised in that USPTO’s Office Action. The examining attorney also took issue with the specimen that BLOCKS DAO provided in order to show how it is actually using the “Just Dao It” trademark in commerce. (Unlike Tacvue, BLOCKS DAO filed its application on an “actual use” – as opposed to an intent-to-use – basis.) The specimen consists of a screenshot of a January 25 BLOCKS.dao Twitter Space event, the title of which is “State of the Dao … Just Dao It w/ Ghost, Calvin Weight & Guests.” According to Wood, registration of BLOCKS DAO’s mark is refused because “the specimen does not show a direct association between the mark and the services and fails to show the applied-for mark as actually used in commerce with the identified services in International Class(es) 42.”
In this case, Wood states that the specimen “does not show a direct association between the mark and services in that there is no reference or a nexus between the mark and the services in the mark, ‘computer software services,’” and thus, BLOCKS DAO must either submit a different specimen or amend its filing basis to intent-to-use in order to avoid having to submit a new specimen at this time.
As for Tacvue’s application, it has not faced any pushback from the USPTO, and in fact, the mark was published for opposition on September 13, thereby, opening the door for “any member of the public who thinks that they will be harmed by the registration of the trademark to oppose it.” This is, of course, where both applications stand to become particularly interesting given that Nike casts a wide net when it comes to oppositions, routinely taking issue with marks that it deems to be too similar to its famous “Just Do It” mark. Recent marks that have landed on the end of an opposition from Nike range from “JUST WINE IT DOWN” for use on “hats; loungewear; sweatshirts; [and] t-shirts” to “JUST FIGHT IT CANCER” for use on “on-line wholesale and retail store services.”
To date, Nike – which lodged an array of web-focused trademark applications with the USPTO last year, including one for “JUST DO IT” for use in Classes 9, 35, and 41 – has not filed a notice of opposition in response to Tacvue’s relatively-recently-published “Just Dao It” mark. However, an opposition may be in the works, as counsel for the Swoosh filed a request for extension of time to oppose the mark on October 12, seeking that “the time period within which to file an opposition be extended until 11/12/2022.” At that point, Nike can either file a notice of opposition or request an additional extension of time.
Interestingly, Tacvue and BLOCKS DAO are not the only companies looking to make use – or actually making use – of “Just Dao It.” A quick sweep of the market reveals that there is a collection of “Just Dao It” NFTs on OpenSea, for instance, with the NFTs consisting of images of stylized versions of the phrase. Meanwhile, MetaGolden, which offers up “physical jewelry and fashion paired with digital assets,” has a JUST DAO IT-emblazoned t-shirt in its lineup. (The t-shirt is sold along with a “featured MP4 NFT,” according to MetaGolden.) And Adam Miller, the founder of MIDAO, a company that provides legal entities for DAOs, has a podcast called “Just DAO It!,” aimed at individuals who are starting DAOs.