Does the scope of a trademark registration for physical goods cover virtual goods?

By Melissa M. Bayona-Torres, Associate Attorney for the Intellectual Property Department at Ferraiuoli LLC

This article was originally published in Spanish in Microjuris. 

Since virtual goods such as NFTs began to be offered in the market, the dilemma has arisen regarding the coverage of trademark rights over this type of goods. In particular, many have questioned whether trademark registrations for physical goods also cover virtual goods.

As a result of this debate, trademark holders have chosen to extend the protection of their trademarks, filing new trademark applications for virtual goods in order to avoid the risk that their current trademark registrations do not provide exclusive rights over virtual goods.

At the same time, many third parties are seeking to register trademarks for virtual goods that are already registered by others for physical goods. However, the United States Patent and Trademark Office (USPTO) has issued administrative actions for two trademark applications regarding likelihood of confusion between the applied metaverse trademarks and the already registered trademarks.

The first action was issued to Reath Mohammed, an individual who intends to register the Prada trademark for services related to virtual and downloadable goods such as shoes, clothing, accessories, bags and luggage, among others. The USPTO examiner rejected the trademark application due to likelihood of confusion with the luxury brand Prada, which is registered with the USPTO and has been used since 1913 for a multiplicity of products, including goods that Mohammed intends to cover.
Comparing the goods, the examining officer argued that the virtual goods identified in Mohammed's application are related to the physical goods identified in the Prada trademark registration.

The second action provides a similar analysis. It was issued to Fenesha Amana Holmes application for the trademark Gucci to identify virtual goods. The USPTO also denied Holmes' application on the grounds of likelihood of confusion with the luxury brand Gucci, which already covers multiple classes related to physical fashion products, including shoes, clothing, accessories, luggage, jewelry and handbags, among others.

The action established that Gucci’s current registration uses broad language to describe retail store services featuring clothing, jewelry and handbags. This language encompasses all services of the type described, including retail store services featuring the virtual goods listed in Holmes’ application.

The position of the USPTO in these actions indicates that a third party will not be able to automatically obtain the registration of a trademark for virtual goods if said trademark is already registered by another owner for the physical goods. It should also be noted that both actions favored widely recognized luxury brands that have already ventured to the sale of virtual goods.

Certainly, this analysis by the USPTO could vary depending on a number of factors, including, but not limited to, the strength and recognition of the trademark, the similarity between the applicants virtual goods and the trademark owner physical goods and if the industry related to the application has already ventured in the NFTs and metaverse world.