Nike has received preliminary responses from the U.S. Patent and Trademark Office (“USPTO”) after filing a handful of trademark applications for registration last fall for use of some of its most famous marks in the metaverse. The sportswear titan made headlines in October in the wake of lodging a number of intent-to-use applications with the USPTO for its name, Swoosh logo, “JUST DO IT,” and Jordan marks for use on “downloadable virtual goods” (in Class 9), “retail store services featuring virtual goods” (Class 35), and “entertainment services, namely, providing on-line, non-downloadable virtual footwear, clothing, headwear, eyewear, bags, sports bags, backpacks, sports equipment, art, toys and accessories for use in virtual environments” (Class 41).
Fast forward from October 2021 to late this month, USPTO examining attorney Barbara Rutland has issued a handful of Office actions, requiring Nike to clarify its “indefinite” identification of the goods and/or services in connection with which it is looking to claim rights in – and registrations for. Rutland states in response to each of the metaverse-related applications that the “precise nature of the goods and services is unclear,” and encourages Nike to substitute “clarifying wording” in order to enable some of the early metaverse trademark applications to proceed in the pre-registration process.
Elsewhere under the Nike, Inc. umbrella, Converse got the go-ahead for publication of three of the metaverse-focused trademark applications for registration that it filed in early November 2021. The USPTO issued notices of publication on June 22 for the applications for “CONVERSE” word mark, “a five-pointed star oriented to the left of a chevron design,” and Converse Chuck Taylor All Star logo without any previous pushback in the form of Office actions. The applications claim use (on a 1(b) basis) on the following goods/services …
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