Trademark in the metaverse: Pre-approved metaverse-related goods and services descriptions in Canada, the U.S., the EU,

The guide below provides some useful information on acceptable descriptions of metaverse-related goods and services in Canada, the United States (U.S.), The United Arab Emirates (U.A.E.), the European Union (EU), and Singapore.

Given the emergence of virtual worlds and the metaverse, brand owners may wish to assess their own trademark portfolios with a view to expanding coverage to encompass this developing space. Virtual worlds permit the movement of digital goods themselves, and trademarks designed for real life goods may not necessarily extend to those digital worlds, depending on their application. In addition to considering potential enforcement mechanisms in the metaverse, brands can consider a proactive approach, with a view to creating protection strategies and potential language for filing trademark applications with respect to virtual worlds and digital elements.

As more creative metaverse-related uses emerge, goods and services will continue to be defined, more guidance will be issued, and the list of acceptable terms should further proliferate. In the meantime, we invite you to contact us for guidance in drafting potential new descriptions including, in some instances, strategizing with respect to populating the listing in the Canadian Manual of Goods and Services with proposed descriptions.

Descriptions of goods and services for the virtual/digital world field in:

Canada

We invite you to consider the goods and services currently recognized by the Canadian Trademarks Office and have listed a few examples in this article. While descriptions of goods and services that are not included in the Canadian Trademarks Office’s Manual of Goods and Services may still be acceptable if described in ordinary commercial terms (terms commonly used in the relevant industry to describe the goods and services), filing applications in Canada using goods and services descriptions that are listed in said Manual will allow applications to reach the examination stage faster and will avoid Examiner’s reports based on goods and services descriptions.

Virtual goods and cryptoassets including NFTs

Brands have begun experimenting with Non-fungible-tokens (NFTs) which have recently dominated headlines. The Canadian Trademarks Office recognizes a number of descriptions of goods (G) and services (S) with respect to NFTs and other cryptoassets encompassing generally classes 9 goods and 42 services.

Acceptable descriptions for NFTs and other cryptoassets in Canada include the NFTs themselves or software for an action related to the NFTs. Examples are goods that generally fall in Class 9 as follows:

• Computer hardware for cryptocurrency mining
• Computer software namely non-fungible tokens for facilitating commercial transactions
• Downloadable computer software for [select: accessing, creating, exchanging, managing, selling, sending and receiving, storing, validating etc.] digital tokens and non-fungible tokens (NFTs)
• Downloadable computer software for producing cryptocurrency wallets built on the blockchain to allow consumers to earn, use and trade non-fungible tokens for facilitating commercial transactions
• Downloadable cryptographic keys for receiving and spending crypto assets
• Downloadable music files authenticated by non-fungible tokens (NFTs)
• Nonfungible tokens (NFTs) for use in authenticating ownership of digital files

Services related to cryptoassets including NFTs

In an alternative, acceptable descriptions can include services for cryptoassets including NFTs, such as platforms that provide an action with respect to NFTs. Examples are services that generally fall in Class 42 as follows:

• Crypto mining services
• Electronic storage of cryptocurrency for others
• Platform as a service (PaaS) featuring blockchain based software platforms, namely, software for transfer or exchange of virtual currencies for information and files using smart contracts and conducting transactions
• Platform as a service (PaaS) featuring blockchain based software platforms namely, software for transfer or exchange of virtual currencies for data using smart contracts for conducting transaction
• Platform as a service (PaaS) featuring computer software platforms used to facilitate blockchain and distributed ledger technology to support a marketplace for roaming communication services between networks
• Platforms for providing access to crypto-collectibles
• Providing on-line non-downloadable computer software for use as a cryptocurrency wallet
• Providing on-line non-downloadable software for generating cryptographic keys for receiving and spending cryptocurrency
• Providing temporary use of non-downloadable computer software for [select: accessing, creating, exchanging, managing, selling, sending and receiving, storing, validating etc.] digital tokens and non-fungible tokens (NFTs)
• Providing temporary use of non-downloadable digital tokens
• Providing temporary use of non-downloadable non-fungible tokens (NFTs)
• Providing temporary use of non-downloadable software for enabling members of an online community to receive and access to non-fungible tokens
• Providing temporary use of non-downloadable software for enabling members of an online community to spend and trade cryptocurrency
• Providing temporary use of online non-downloadable software for use in electronically [select: accepting, transmitting, sending and receiving, storing, trading etc.] non-fungible tokens
• Providing temporary use of online non-downloadable software for use in electronically accepting digital currency
• Providing temporary use of online non-downloadable software for use in electronically sending and receiving digital currency
• Providing temporary use of online non-downloadable software for use in electronically storing digital currency
• Providing temporary use of online non-downloadable software for use in electronically trading digital currency
• Providing temporary use of online non-downloadable software for use in electronically transmitting digital currency
• Software platforms for providing access to non-fungible tokens
• User authentication services using blockchain technology

Electronic transfer of cryptoassets

The electronic transfer of these cryptoassets can fall within Class 36:

• Electronic transfer of digital tokens incorporating cryptographic protocols used to operate on a computer platform in the field of blockchain technology
• Electronic transfer of non-fungible tokens incorporating cryptographic protocols used to operate on a computer platform in the field of blockchain technology
• Electronic transfer of virtual currencies
• Virtual currency exchange
• Virtual currency trading services
• Cryptocurrency exchange services
• Currency exchange, namely virtual currency exchange transaction services for transferrable electronic cash equivalent units having a specified cash value

Software for use in the metaverse

Examples of metaverse applications may take the form of software, games, digital goods (including “skins”), or avatars or the like for use in the metaverse that generally fall within Class 9.

• Compilation and analysis of business data in the field of blockchain technology and cryptocurrency
• Computer programs featuring badges for use in online virtual worlds
• Computer programs featuring characters for use in online virtual worlds
• Computer programs featuring clothes and accessories for use in online virtual worlds
• Computer programs featuring emojis for use in online virtual worlds
• Computer programs featuring stickers for use in online virtual worlds
• Computer programs featuring virtual beauty products being skin care preparations, sun care preparations and cosmetics for use in an online virtual world
• Computer software for blockchain data mining
• Computer software for cross blockchain transfers
• Computer software for developing, building, and operating consumer blockchain applications
• Computer software for electronic trading of virtual currency
• Computer software for interacting with blockchain platforms
• Computer software for managing and validating cryptocurrency transactions using blockchain-based smart contracts
• Downloadable computer software for managing and verifying cryptocurrency transactions on a blockchain
• Downloadable content being images
• Downloadable video game assets sold individually, namely downloadable digital files containing videogame avatars, clothing, pets, vehicles, items, tools, toys, terrain, 3D objects, textures, meshes, animations, sound effects, music, emotes, and gestures for use in video game development
• Virtual assistant software
• Virtual reality computer game programs
• Virtual reality computer game software
• Virtual reality computer games for use on cellular phones
• Virtual reality computer games for use on mobile phones
• Virtual reality computer games for use on notebook computers
• Virtual reality computer games for use on personal computers
• Virtual reality computer games for use on smart phones
• Virtual reality computer games for use on tablet computers
• Virtual reality game software
• Virtual reality goggles
• Virtual reality head-mounted video displays for use in playing video games
• Virtual reality software for meditation classes
• Virtual reality software for playing computer games

Metaverse-enabling hardware

These metaverse applications may also take the form of hardware, such as head-sets, which enable virtual reality platforms. Pre-approved terms generally fall in Class 9:

• Electronic controllers for use with virtual reality headsets
• Electronic virtual reality gloves
• Headsets for virtual reality games
• Virtual reality headsets adapted for use in playing video games
• Virtual reality headsets and helmets adapted for use in playing video games

Unsurprisingly, the sale of these goods may fall into Class 35:

• Online sale, wholesale and retail sale of virtual reality glasses

Marketplace for virtual goods

When the service being described is a marketplace for virtual or digital goods, the description will typically fall into Class 35.

• Conducting interactive virtual…