Nike prompted an explosion in trademark filings after it made headlines in October 2021 in connection with a number of trademark applications for registration that it lodged for its famous marks for use on goods/services the virtual world. On the heels of the Beaverton, Oregon-based sportswear behemoth filing an array of metaverse-specific applications for its name, swoosh logo, and various other word marks, hundreds of other companies – from Rolex to Inditex – swiftly followed suit and filed applications of their own for use of their marks in the “quintessential” classes of Web3-related goods/services, namely, “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 … for use in virtual environments” (Class 41).
The barrage of trademark applications appeared to be motivated largely by uncertainty among brands and their lawyers about how courts and the U.S. Patent and Trademark Office (“USPTO”) (and other trademark offices), alike, would treat their existing trademark rights and registrations in connection with the burgeoning world of Web3. The flurry of filings – almost all of which mirrored the classes and corresponding descriptions of goods/services in the ones lodged by Nike – also seemed to suggest that brands were not quite sure what they are going to do in the metaverse, and thus, their filing were merely a way to cover their bases in advance.
As for the filing basis for such applications (almost exclusively intent-to-use), that was a clear indication that most companies had not yet figured out how they would use or begun to make any meaningful use of their marks in Web3.
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