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By Michael Kondoudis, NFT Trademark Attorney This is the ultimate guide to NFTs and trademarks. Interest in non-fungible tokens (NFTs) is increasing. So too are the number of companies that have filed trademark applications for their NFT brands. In 2020, the U.S. Patent and Trademark Office received just 20 trademark applications for NFT brands. In 2021, that number was over 1400! NFTs are not just for fine art and collectibles anymore. So, if you’re ready to learn about NFTs, trademarks, and how to protect NFT brands, this guide is for you. CONTENTS PART I: THE BASICS OF NFTs AND TRADEMARKSWhat NFTs are and what they doExamples and uses of NFTsNFT trademarksPART II: INTELLECTUAL PROPERTY AND NFTsHow Trademarks apply to NFTsHow Patents apply to NFTsHow Copyrights apply to NFTsPART III: PROTECTING NFTs WITH TRADEMARKSHow to protect an NFTWhy trademarking an NFT is a good ideaWhich parts of an NFT brand can be trademarkedPART IV: HOW TO TRADEMARK NFTsWhen to trademark an NFTWhere to trademark an NFTThe NFT trademarking processThe common trademark classes for NFTsPART 5: FREQUENTLY ASKED QUESTIONS 1. THE BASICS OF NFTs + TRADEMARKS What does NFT mean?NFT stands for “non-fungible token.”Non-fungible means, more or less, that something is not interchangeable. Instead, it is one-of-a-kind, individual, and not replaceable. So, for example, a Picasso painting is “non-fungible” because it is one-of-a-kind and irreplaceable. In contrast, a $1 bill is fungible because someone can swap one for another that is essentially the same. What is a Non-Fungible Token?A non-fungible token or NFT is a digital asset that can be used to represent unique, one-of-a-kind assets – usually crypto-properties. An NFT can technically contain anything digital, including drawings, animated GIFs, songs, or items in video games. NFTs can also represent a wide range of property assets that exist in the real world property such as a piece of art, a song, videos, collectibles, and even real estate. NFTs cannot be copied because their digital ownership is tracked with blockchain technology, and it is one-of-a-kind uniqueness that makes an NFT valuable.Purchasing an NFT is akin to buying an original Jackson Pollack painting. While prints may be available, only you own the original. What do NFTs do?NFTs allow you to buy and sell ownership of unique digital and physical items and keep track of who owns them using the blockchain. Blockchain records cannot be forged because they are maintained by thousands of computers worldwide.NFTs can have only one owner at a time, and blockchain technology secures their ownership information. This prevents the easy copying of digital assets, which historically reduced the market for digital assets. In this way, NFTs ensure the authenticity of unique properties, especially collectible digital properties (crypto-collectibles).Now, because NFTs can ensure the uniqueness and ownership of digital assets, the markets for digital assets are skyrocketing. Do you need help with your trademark? Talk to an Attorney Today How is an NFT different from a cryptocurrency?An NFT is built on the same technology as cryptocurrencies, but they differ in one crucial aspect – interchangeability. Cryptocurrencies are “fungible,” meaning they are interchangeable. In contrast, an NFT cannot be exchanged or swapped. What are some examples of NFTs?Theoretically, NFTs can be used for any property that is (1) unique and (2) needs provable ownership. So, NFTs can represent almost any physical or virtual property, including: Digital artworkA limited run of sneakersAn essayDigital collectiblesDomain namesTicketsDebtsParcels of real estate How are companies using NFTs?The most immediate uses for NFTS include brand control, increased revenue, brand awareness, and enhancing trust/authenticity.Authentication: Many brands leverage blockchain NFT technology to create an authentication system for their customers. For example, luxury brands are issuing serial numbers for their products and using NFTs to provide authentication services. Trust in the authenticity of high-end items protects the market for those items and their marketability.Brand Awareness: More and more companies and organizations are creating brand awareness by licensing their brands through the release of NFT packages. NFTs for bespoke footwear, clothing, and artwork are increasingly sold at auctions.New streams of revenue: More and more companies and organizations are creating new revenue channels by licensing their brands and authenticating digital products by NFT packages. Music bands, for example, may license their branding or images to release exclusive digital content for their fans.Brand Protection: Only the owners of trademarks can use them, this includes the owners of NFT trademarks. When you trademark the name of your NFT, you are the only one who can use that name for NFTs and crypto-properties. What is a trademark?A trademark is a badge of origin that distinguishes the source of goods (or services) from one enterprise from those of others. The most common trademarks for NFTs are names and logos.Trademarks prevent consumer confusion by ensuring that competitors cannot use the same or similar name or symbol. This exclusivity is particularly valuable when it comes to NFTs because their value is based on authenticity and trust.A Federal trademark is an enhanced trademark that has been certified by the U.S. government. It comes with exclusive nationwide legal rights. What do trademarks protect?Trademarks protect brands, including NFT brands and properties represented by NFTs. Can an NFT be trademarked?Yes. NFTs can be trademarked. Trademarking an NFT is the best way to protect your NFT brand. NFTs can definitely be trademarked. What is an NFT trademark?An NFT trademark is a trademark for a non-fungible token that represents digital media, virtual goods, digital collectibles, and other crypto-assets that can be bought, sold, exchanged, and transacted using blockchain technology. Examples of a trademark for an NFT would be a footwear brand trademarking its name for:• Downloadable digital media namely, digital assets, digital collectibles, digital tokens and non-fungible tokens (NFTs)• Provision of an online marketplace and registry for buyers and sellers of digital assets, digital collectibles, digital tokens and non-fungible tokens (NFTs)• Digital assets and digital collectibles sold as non-fungible tokens (NFTs)See U.S. trademark application no. 97212947 filed by Crocs, Inc. 2. INTELLECTUAL PROPERTY AND NFTs NFTs are a new technology and are the cutting edge of digital and e-commerce. So, it should be no surprise then that NFTs and digital commerce raise many intellectual property (IP) law questions. The creation, monetizing, promotion, selling, trading, transferring, and storage of NFTs come with important trademark, patent, and copyright implications. How does Trademark apply to NFTs?To be clear, trademark protection definitely apples to an NFT. Trademarks protect brands, including NFT brands. Trademarking an NFT ensures that no one else can use the same or similar name or logo for their NFT. Trademarking an NFT ensures that no one else can use your name or logo, which keeps them distinctive. Trademark protection is a must for any brand owner who wants to protect their NFTs. That’s how trademarks apply to NFTs.Trademark = protection for names and designs for your NFTHow do you get the most trademark protection for an NFT?To get the most trademark protection for an NFT, a brand owner should review its existing trademarks and, if needed, apply for additional trademarks for digital assets, crypto-assets, and virtual goods authenticated by NFTs. This is how to get the most protection for the name of an NFT. How do Patents apply to NFTs?Patent protection applies to NFTs. Patents protect inventions, including crypto and blockchain-related inventions. A patent makes it illegal for anyone else to use your invention. Examples of crypto and blockchain inventions include methods of authenticating and transferring NFTs and new ways to mint cryptocurrencies. That’s how patents apply to NFTs.Blockchain patents are increasing in number and value, and the U.S. Patent and Trademark Office is granting more and more of them.Patent = protection for crypto and blockchain inventions How does Copyright apply to NFTs?Copyright applies to NFTs. Copyrights protect from copying creative works and software, including NFTs and the assets that they authenticate. For example, a one-of-a-kind collectible, authenticated using blockchain technology, can be copyrighted.Copyright = protection from copying of your digital/crypto-asset 3. PROTECTING NFTs WITH TRADEMARKS How do you protect an NFT?The best way to protect an NFT is to trademark the name and logo you use to brand the NFT. Trademarks protect brands, including NFT brands. Trademarking your NFT name is the best way to protect it.• Can you legally protect your NFT name?Yes, you can legally protect the name of your NFT with a trademark. Trademarking your NFT name is official confirmation that you legally own it. Confirming the legal ownership of the name of your NFT enhances customer trust in the authenticity of the asset represented by your NFT.• How do you protect your NFT name?The most effective way to protect the name of your NFT is to trademark it. Trademarking your non-fungible token name will protect it by giving you exclusive rights to your token name and preventing others from using the same or similar name for their NFTs.• Many brand owners wonder if they can trademark the name of their NFT.To be clear, the answer is YES. You can trademark an NFT name, and an increasing number of businesses have applied to trademark their non-fungible token names! In fact, the U.S. Patent and Trademark Office is seeing a surge in trademark applications for NFTs. 2020 – 20 applications2021 – 1400+ applicationsTrademarking the name of your NFT is the most effective way to protect it and the brand identity you’re building in your brand of properties represented by your non-fungible tokens. Why should you trademark your NFT name?Yes. NFTs ensure the authenticity of a unique item. But, to be of value, buyers must have faith in the NFT. That is where trademarks come in.Trademarking the name of your NFT (or logo) will:prevent anyone else from registering the same or similar name for their NFT and taking the name from youincrease customers confidence in your NFT brand, which increases NFT trust and valueprotect against unauthorized use of your NFT brand by copycats, which could undermine trust in the authenticity of your NFTsTrademarking your NFT brand prevents anyone else from trademarking the brand and taking it from you. Remember: The value of an NFT is in the trust that it represents authentic ownership of a unique item. Trademarks promote consumer confidence by preventing copycats and confusion from using similar names. In short, trademarks let customers know that they are buying a genuine article when they buy your NFT.ExampleA toy company wants to sell in-game items, such as skins, avatars, and powers. To help increase sales, the company decides to authenticate these digital assets with NFTs using their brand. As a result, customers are more inclined to buy NFT secured in-game items. This is what Mattel Inc. is planning on doing with its HOT WHEELS NFT GARAGE trademark (U.S. Trademark Application No. 90767267). NFT trademarks also protect against the unauthorized use of brand names and logos for someone else’s NFT. This keeps your NFT brand unique and makes your NFT item more valuable. EXAMPLEA luxury retailer wants to sell high-end digital products. To ensure that they can maintain premium pricing for their physical inventory and retail store operations, the retailer decides to authenticate its digital products with NFTs. This is what Saks LLC is planning on doing with its SAKS trademark (U.S. Trademark Application No. 90789965). Trademarking an NFT name and logo also protects against the use of your brand by the competition. This protection reduces confusion and dilution of the uniqueness of a brand. What parts of an NFT can you trademark?You can trademark the name and logo you use to promote your NFT or the property represented by your NFT. You can also trademark services related to NFTs. Some examples include:financial services such as non-fungible token tradingissuance of digital tokensproviding online non-downloadable virtual goods, namely, digital art, photographs, videos, or audio recordings featuringcreation of online retail stores for others to create hosted crypto collectible and blockchain-based non-fungible token stores Do you need help with your trademark? Talk to an Attorney Today Examples of NFT TrademarksThe surge in NFT trademark applications is fueled primarily by small businesses and individuals. Still, big brands are increasingly taking note and are applying to trademark their brands for NFTs. Naturally, businesses are curious about what an NFT trademark looks like. Here is list of recent applications for an NFT trademark:Bazooka (U.S. TM App No. 97072828)Brookstone (U.S. TM App No. 97130320)Clinique (U.S. TM App No. 97115394)Converse (U.S. TM App No. 97107367)Entertainment Weekly (U.S. TM App No. 90751600)Fanatics (U.S. TM App No. 97156019)Garbage Pail Kids (U.S. TM App No. 97072832)Hot Wheels NFT Garage (U.S. TM App No. 90767267)Jay-Z (U.S. TM App No. 97118641)John Wick (U.S. TM App No. 90688332)Live Nation (U.S. TM App No. 97089071)Saks (U.S. TM App No. 90789965)Stratocaster (U.S. TM App No. 90626105)Ticketmaster (U.S. TM App No. 97089225)UFC (U.S. TM App No. 90668412)Warhol (U.S. TM App No. 90602664) If you want to know about the latest NFT trademark filings at the USPTO, we invite you to visit our US NFT Trademark Application Information Hub, where we break down the latest NFT trademark applications by month, industry, and major brands.• Updated Daily • Who is trademarking NFTs?A wide range of companies in many industries are trademarking their NFTS. Companies that have filed trademark applications for NFTs include Nike, Puma, Panera, McDonald’s, Willaims-Sonoma, and Pottery Barn. Personalities who have filed trademark applications for NFTs include Kobe Bryant, Shaquille Oneal, Muhammad Ali, and Jay-Z. Here is a list:Cosmetics and FashionClinique Laboratories, LLCConverse Inc.Estee Lauder Cosmetics Ltd.Nike Inc.Toys and CollectablesMattel Inc. The Topps Company, Inc.The Upper Deck CompanyEntertainmentLegend Pictures Park Avenue Entertainment LLC Entertainment Weekly Inc. Lion’s Gate Kiss Catalog, Ltd.Live Nation Worldwide, Inc. Fender Musical Instruments CorporationSC Branding LLC (Jay-Z) 4. HOW TO TRADEMARK NFTs Should you trademark your NFT?Yes, you should trademark the name of your NFT. Competition in the NFT space is fierce. Trademarking your NFT will ensure that your NFT name and logo:are available for your exclusive use do not infringe anyone else’s trademarks, which saves you legal headachesstay unique so that they stand out in the marketplace over time, which keeps your NFT brand recognizable and more trustedstay legally yours so that you never have to rebrand, so you can invest and promote your NFT with confidence.These benefits protect your profits. Top reasons why you should trademark the name of your NFTTrademarking your NFT ensures that your NFT name and logo do not conflict with any existing registrations. Trademarking involves research to make sure that no one else has trademarks that are the same or similar to your NFT name and logo. Plus, the USPTO only registers trademarks that do not conflict with existing registrations. So, the trademarking process confirms that your NFT name and logo: (1) do not infringe any existing registered trademarks for NFT and (2) are available for your exclusive useTrademarking your NFT will prevent anyone else from trademarking the same or similar name for their NFT. As a general rule, only one person can own a trademark in an industry, including NFTs. So, by trademarking the name of your NFT, you ensure that no one else can trademark it and take it from you. This makes trademarking great insurance against ever having to rebrand. Trademarking your NFT will increase its value and the value of the property it represents. Trademarks ensure authenticity, which increases trust in your brand.Trademarking your NFT name and logo gives you legal permission to use the ® trademark symbol with them. The ® symbol is “public notice” that the name and logo for your NFT are protected under federal law. This enhances your brand credibility and warns competitors to stay clear of your marks, both of which promote trust in the authenticity of your NFT.Remember: Once you have registered your trademark, it will be officially yours and no one else can use it (or anything similar) without your permission. How do you trademark an NFT name or property?You trademark the name of your NFT or crypto-property by applying to the U.S. Patent and Trademark Office (USPTO) and getting your application approved for registration. Trademarking with the USPTO name is a legal process that usually takes about 12 months. So, the sooner you start trademarking your NFT and crypto trademarks name, the better.Here’s how to start the process to trademark the name of an NFT or crypto-property:Select a unique name and logo. Read more about how to pick a strong trademark here. Search the USPTO trademark database to confirm that no one has registered or applied to register the name and logoCollect the required information and decide on a trademarking strategyPrepare and file your new application (correctly) with the U.S. Patent and Trademark Office, or “USPTO,” for short.Navigate the USPTO application review process, which takes several months.Use the correct trademark symbol. Read more about trademark symbols here. When should you trademark an NFT name?Most experts agree that you should trademark your NFT brand sooner rather than later. So, if you are serious about using NFTs to make something marketable, you should trademark the NFT name as soon as possible. Is it too late to trademark your NFT?No, it is not too late to trademark an NFT and protect your NFT brand. Non-fungible tokens (NFTs) and NFT brands are growing in popularity. As a result, the U.S. Patent and Trademark Office (USPTO) is receiving an increasing number of new trademarks for NFT brands and virtual goods authenticated by NFTs. Still, far less than .5% of all trademark applications are for NFTs and NFT brands. Which international classes should you include in your NFT trademark application?The U.S. Patent and Trademark Office registers trademarks for various NFT-related products and services. Applicants should consider including the following classes in their applications to register an NFT trademark:International Class 009 (downloadable media, computer software)International Class 035 (business services)International Class 036 (financial, banking, and real estate)International Class 041 (education and entertainment)International Class 042 (scientific and technical services) Do you need help with your trademark? Talk to an Attorney Today What are some examples of NFT-related products and services that can be trademarked?International Class 009Fungible and non-fungible token-based goods for use online and in online virtual worldsDownloadable electronic data files featuring artwork, text, images, audio, video, and non-fungible tokensDigital media, namely, digital collectibles, digital tokens, and non-fungible tokens (NFTs)Downloadable multimedia files authenticated by non-fungible tokens (NFTs)Digital tokens; Non-fungible tokens; Digital tokens based on blockchain technologyNon-fungible tokens used with blockchain technology; non-fungible tokens used with blockchain technology to represent a collectible itemInternational Class 035Provision of an online marketplace for buyers and sellers of NFTs of digital art, music, sports, collectibles, and documentsProvision of an online marketplace for buyers and sellers of digital properties authenticated by non-fungible tokens (NFTs)Providing an online marketplace for the peer-to-peer exchange of personal or digital property and Non-Fungible Tokens (NFT’s)International Class 036Financial services such as non-fungible token trading; Issuance of digital tokensIssuance of tokens of value; Issuance of tokens of value, namely, digital tokens for use by members of an online community via a global computer networkInternational Class 041Providing online non-downloadable virtual goods; Providing online non-downloadable virtual goods authenticated by NFTsThe provision of downloadable virtual goods authenticated by blockchain technologyInternational Class 042Creation of online retail stores for others to create hosted crypto collectible and blockchain-based non-fungible token storesCreation of online retail stores for others in the nature of web-based service that allows users to create hosted cryptocurrency and blockchain-based non-fungible token stores 5. FREQUENTLY ASKED QUESTIONS 1. When can you use the registered trademark ® symbol with an NFT?Once you have a trademark registration from the U.S. Patent and Trademark Office, you can start using the registered trademark symbol ® with your NFT trademark. Read more about trademark symbols here.2. How do you get a trademark registration?You get a trademark registration by submitting an application to the U.S. Patent and Trademark Office (sometimes called the “USPTO”). The USPTO is an agency of the federal government, and it administers trademark registrations.3. How important is it to trademark your NFT?Very. According to the USPTO, there has been a substantial surge in trademark filings for NFT trademarks. In 2021 alone, over 1400 applications have been filed. This surge represents increased competition in a soon-to-be crowded space.4. Where do NFTs come from?NFTs are created on any blockchain that supports smart contract programming. The Ethereum blockchain is a prime example because it supports cryptocurrencies like bitcoin and NFTs. Other blockchain options include:• Cosmos • EOS • Flow by Dapper Labs • Polkadot• Tezos• TronOnce your NFTs are created and ready for sale, you will need to submit them to a marketplace. Popular marketplaces for Ethereum include OpenSea, Rarible, and Mintable.5. Can NFTs be trademarked?Yes. NFTs can be trademarked, and the number of trademark filings for NFT brands at the USPTO is increasing. 6. How do you get an NFT trademark?You get an NFT trademark by applying to the U.S. Patent and Trademark and successfully navigating the trademark examination process. TAKE THE NEXT STEP Take the next step toward LEGALLY owning your NFT brand?We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting your NFT trademarks, we invite you to book a FREE brand protection strategy session with us here. Michael KondoudisFor more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories. Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994). mekiplaw.espresso.themodernfirm.com Read More