Oct 6, 2022

Trademarks in the Metaverse

What is the Metaverse?

The metaverse is essentially an immersive experience that integrates the virtual world and reality, allowing users to interact with one another even if they are not physically in the same space. People can work, shop, and socialize in the metaverse the same way they do in real life. This inevitably translates to a digital economy; users can sell and purchase virtual products, like clothes and real estate, that only exist in the metaverse. 

Who is trademarking in the Metaverse?

Major brands are preparing to enter the metaverse by trademarking their logos and products. 

  • Nike has filed seven trademark applications with the USPTO in which the company indicated its intent to make and sell virtual apparel. 
  • CVS Health filed to trademark its pharmacy and health clinics with the USPTO, intending to patent sales of virtual goods like wellness and beauty products, prescription drugs, and non-emergency medical services.
  • Walmart has filed several trademarks that indicate its intent to market virtual goods. In a separate filing, Walmart specified that it would offer customers NFTs and a virtual currency. 
  • Most notably, Facebook has dedicated itself to total immersion in the metaverse. Last year, the company officially changed its name to Meta. 

Why are trademarks in the Metaverse important?

Your intellectual property is valuable and should be protected- both physically and virtually. Creators are already taking advantage of the unprecedented circumstances created by the introduction of the metaverse. For example, third-parties filed two trademark applications last year to use Prada and Gucci logos on “downloadable virtual goods” on metaverse platforms. The third parties are unaffiliated with the real Prada and Gucci, but their attempt to capitalize on  major brands in the metaverse marketplace is an indication of what is to come.

 Shielding your brand’s name and image in the virtual world is crucial. Lloyd & Mousilli can guide you through the complexities of obtaining a trademark for use in the metaverse to ensure you are afforded the protection your brand is entitled to. 

What protections does a trademark in the Metaverse offer?

Fraudulent use of your intellectual property by unaffiliated third parties can be detrimental to your brand’s image. The last thing you want is your customers being exposed to confusingly similar products being sold by infringers. A trademark will legally protect your brand in the event that your products or intellectual property are infringed upon. Even if your brand has already obtained trademark registrations for the “real world,” you should consider filing separate applications for those existing trademarks that cover distinct virtual goods and services. This will ensure that such rights are recognized and protected in the metaverse virtual marketplace. 

How are trademarks in the Metaverse enforced?

The first course of action to enforce a trademark is typically to send a cease and desist letter to the infringer. If this is unsuccessful in stopping the infringement, the next step is to file a lawsuit. Trademarking in the metaverse is a relatively new concept so it is still too early to say exactly how trademark enforcement in the virtual world will unfold, but the general process of stopping an infringer will be the same. Lloyd & Mousilli is prepared to preserve the integrity of your brand by counseling you in the event of trademark infringement.

You Want In: Where Do You Start?

Filing a trademark application for your brand is the first step. Lloyd & Mousilli's trademark attorneys understand the complexities of intellectual property, as well as the intersection of technology and law. Book a consultation to discuss more in depth about the trademark process as it pertains to the metaverse.

Oct 6, 2022

Amazon's Brand Registry: Why Trademarks Matter

Brand protection in e-commerce

In the e-commerce space, the available options are limitless for the consumer. There are endless amounts of products available from anywhere at any time, which is why brand identity is critical in the online marketplace. Considering the tremendous amount of e-commerce companies, there is always the possibility of infringement. This is why it is important that the consumer knows exactly who they are purchasing from.

What is the Amazon Brand Registry?

The Amazon Brand Registry is a program that assists brand owners in protecting their intellectual property on Amazon. The most pertinent feature in this context is its Project Zero Program. Once infringement is proven, the program allows you to blacklist those infringing users.

Why is Amazon's Brand Registry important?

A popular seller on Amazon is bound to attract infringing parties who seek to capitalize on that brand’s reputation and loyal customer base. The infringing party may produce subpar products and deliver poor customer service. This can result in financial loss and a damaged reputation for the true brand. A trademark registration, however, gives the Amazon seller recourse to take action against the infringing party.

Establishing a trusted brand that customers will return to is key, and the first step is to ensure that your brand identity is protected by a trademark registration. This will safeguard both your brand’s identity as well as your customers from infringing parties. Joining Amazon's Brand Registry gives you the ability to report those infringing listings to keep your brand safe, and your customers satisfied.

How do I join Amazon’s Brand Registry?

To be listed on the registry, your brand must have an active, registered trademark through one of the following government trademark offices: United States, Brazil, Canada, Mexico, Australia, India, Japan, France, Germany, Italy, Spain, Netherlands, Turkey, Singapore, Saudi Arabia, Sweden, Poland, the United Kingdom, the European Union, and the United Arab Emirates.

Once you’ve obtained a trademark registration, you may apply for the registry.

How do I obtain a trademark registration?

Applying for a trademark:

Obtaining a trademark begins with filing an application. Lloyd & Mousilli specializes in intellectual property and can assist you with the trademark application process from start to finish. We will guide you through the process of crafting a goods and services description and selecting appropriate evidence of use. Additionally, our seasoned attorneys are well equipped to advise you on overall IP strategy.

Click here to book a free consultation with a member of our trademark team.

Can I join Amazon's Brand Registry if my application is pending?

There is a loophole that allows some sellers to apply to Amazon’s Brand Registry even if their trademark is not officially registered yet. Sellers in the United States, United Kingdom, Germany, and India are eligible to apply to the registry while their trademark is pending in the application/examination phase. This is especially advantageous considering the registration process is currently averaging 8 to 12 months for United States applicants.

If you are in one of the above mentioned countries, your brand is eligible to apply to the registry as soon as your trademark application is pending.

How Lloyd & Mousilli can help

Protecting your intellectual property is critical to maintaining your brand’s identity. Our experienced counsel can guide you through the trademark application process to ensure you have the greatest likelihood of achieving registration. We are well-versed in the Amazon Brand Registry process and are ready to help you claim your place on the registry.

Sep 1, 2022

Amazon and the Pitfalls of Counterfeits and Wrongful Takedowns

E-commerce has fundamentally transformed the retail marketplace and has changed the way consumers shop. Fast and inexpensive shipping, the convenience of being able to shop at any time of day from anywhere, and the ability to quickly compare prices online— added to the convenience of avoiding long lines and traffic— makes e-commerce appealing to virtually every shopper. Unsurprisingly, e-commerce sales account for a significant and continuously growing percentage of total retail sales in the U.S.

Among the various e-commerce platforms available, Amazon leads all others in sales by a comfortable margin and is the highest-grossing online retailer in the nation. On the Amazon website, customers can purchase products sold directly by Amazon and those available on Amazon’s marketplace sold by a third-party seller. Amazon’s e-commerce platform has allowed third-party sellers to reach a far wider consumer audience— estimated at over 300 million active customers— than was ever possible before. Hundreds of thousands of small and medium-sized businesses sell on Amazon and the number of sellers in the United States and around the world continues to grow every day. In fact, Amazon has emerged as one of the most powerful distribution channels in the world.

Given the ease of selling on Amazon’s e-commerce platform, the relative anonymity sellers have, and its massive global audience, there is little wonder why the shadowy business of counterfeit goods has found its way to Amazon. After all, the world of counterfeits is a massive, sprawling   industry.  According to a 2019  Organization for Economic Co-operation and Development report, international trade for counterfeit goods reached $509 billion in 2016. In the U.S., counterfeits are estimated to cost the economy $30 billion to $40 billion annually by diverting sales away from purchases of legitimate products. The top industries affected by counterfeits include footwear, luxury handbags, electrical machinery and equipment, and watches. Given the significant amount of lost revenue counterfeit goods siphon from their authentic counter-parts, it is little wonder why counterfeits are considered a serious threat to companies and their brand.

As recent court decisions indicate, Amazon and other similar third-party marketplaces are not liable for selling counterfeit products on their sites largely because they are a platform for sellers rather than sellers themselves. In Milo & Gabby LLC v. Amazon.com, Inc., for example, the   Federal Circuit held that Amazon’s activities, which included providing an   online marketplace and shipping services to third-party vendors selling products that allegedly infringed the plaintiff’s copyrighted products, did not create seller liability for the purposes of copyright infringement. See Milo & Gabby LLC v. Amazon.com, Inc., 693 F. App'x 879 (Fed. Cir. 2017).

While Amazon and other third-party marketplaces have no legal duty to police counterfeit listings and they are not legally obligated to proactively remove suspected counterfeits from their platform, they will apply a take down procedure and quickly remove the product listing from their website when a complaint is properly filed. Consequently, right holders must take responsibility for their own intellectual property enforcement.

Unfortunately, at times, right holders improperly abuse Amazon’s take down procedure by wrongfully filing complaints— including trademark and patent infringement claims— against legitimate sellers. For example, right holders often misunderstand their rights under U.S. intellectual property law and attempt to overreach by filing illegitimate complaints against resellers of their brand. Once a complaint is filed— whether or not the complainant is on the right side of the law— Amazon will deactivate or suspend the seller’s account until an investigation is completed. Investigations are protracted events that are seldomly resolved quickly, much to a seller’s disadvantage since a suspended account for a seller means lost revenue every moment of the suspension.

Sellers are frequently eager to reinstate their account quickly but often find difficulty navigating Amazon’s complex rules for reinstatement. Faced with complaints from a powerful brand holder, sellers often give up the fight, unaware that the brand holder is on the wrong side of the law. When this occurs, a formal demand for the brand holder to cease and desist is in order. The demand letter should cite pertinent U.S. intellectual property statutes and caselaw to support the seller's position and should instruct the brand owner to retract all complaints immediately. A working knowledge of basic U.S. intellectual property law and practical negotiation skills are usually all that are needed for relatively quick closure to these disputes.

The world of e-commerce is constantly evolving and it has become increasingly more complex and sophisticated. In order to stay in business and remain competitive, sellers can no longer remain ignorant of U.S. intellectual property law. Savvy sellers can protect their brand and/or fend off unwarranted take downs by becoming informed and utilizing the law to their advantage.