NFTs And Branding – Does Trademark Protection Need To Be Considered? – Intellectual Property

Having one’s intellectual property protected by appropriate
registered intellectual property rights should be on the agenda of
every diligent businessperson. Whenever new technology is developed
it should be protected as (utility) patent – or kept secret (trade
secrets). The new products and/or services resulting from the new
invention will usually be commercialised under a specific name – a
brand that can be protected as a trademark. Additionally the
question arises as to whether there is already a generic name for
such product/service or whether the invention created a completely
new thing that is not yet reflected in the Nice Classification, the
international classification of goods and services used by most IP
Offices for the registration of trademarks.

Therefore, we considered whether the (virtual) goods and
services offered in connection with NFTs can already be found in
the Nice Classification for trademark applications.

In our NFT self-experiment a
few different stakeholders are involved. Below we shed light on
those aspects that may be relevant in a trademark context:

Trademark protection of an NFT
marketplace

For our self-experiment, Guido Kucsko provided a digital artwork
(see “NFT Self-Experiment: The
artwork“) that was tokenized and acquired by the
Francisco Carolinum Museum in Linz via the NFT platform OpenSea.
OpenSea is a commercially operated online marketplace for tokenized
goods, which include inter alia digital art and other assets backed
by the blockchain Ethereum. Via the OpenSea marketplace, users can
set up wallets and create a collection. NFTs can be bought, bid on,
and offered for sale. OpenSea describes itself as “the
world’s first & largest NFT marketplace“. As
online marketplaces are a well-established service that have
already existed for many years, it is not surprising that there is
already pre-approved wording for such service in the alphabetical
list of the Nice Classification (“provision of an online
marketplace for buyers and sellers of goods and
services“).

This means a trademark for an NFT marketplace can be protected
within the existing framework of the Nice Classification.

Trademark protection for (digital) works of
art

Trademarks can be registered for goods that are works of art. This
can simply be stated based on the fact that the Nice Classification
includes pre-approved wording for some kinds of creations
classified based on the material of the work (e.g. of common metal
in class 6, of precious metal in class 14, paintings in
class 16, etc.).

Analogously, it should be possible to protect a trademark for
digital art, like the subject of our self-experiment -
“CONCEPTUAL ARTIST PULLING AN IDEA OUT OF HIS HEAD” -
created by Guido Kucsko, a sequence of seven individual images that
run as an animated GIF like a miniature film. A trademark for such
work would in our opinion be classified in class 9 as some
kind of the pre-approved goods “recorded content”, e.g.
“video recording“. Argument for such
classification is the fact that the artwork is more likely to be
classified as a good than a service. There are also arguments for a
different classification which would likely fill a separate
article.

In our self-experiment no trademark was used for the digital
work of art or the artist. However, there are some projects using
trademarks for their NFT art, e.g. CryptoPunks, CryptoWiener or
Pixel Rebels. Reviewing the applications filed for these marks it
becomes apparent that it is not easy to build a classification for
such mark. First an artist has to decide which products will be
protected (the artworks themselves or merchandising articles) and
secondly, a decision needs to be made how to classify the
products.

(Digital) works of art protected as
trademarks

The artwork itself can be protected as trademark. The fact that
the artwork is tokenized does not complicate the selection of the
goods or services for which the artwork will be used as a brand.
Often the goods of interest will be merchandising articles (e.g.
T-Shirts, bags, screensavers, etc.). Another option would be that a
tokenized artwork will be used as a brand for goods/services of a
company. In this case the trademark needs to be protected for such
products.

Trademark protection of the virtual world where NFTs are
exhibited

Digital worlds provide for parcels of virtual land that can be
acquired for real money and subsequently used inter
alia for building three-dimensional art galleries to
exhibit crypto art. For our NFT self-experiment, we chose the
virtual world Cryptovoxels (a
user-owned virtual world powered by the Ethereum blockchain), where
the Museum Francisco Carolinum in Linz purchased parcel #4650. This is also the
location where our NFT artwork was presented in a virtual museum
exhibition.

In our opinion such exhibition services are classified in
class 41, being either educational or entertainment
services.

Conclusion

There is no standard strategy yet when it comes to trademark
protection in conjunction with NFT marketplaces, NFT art as well as
virtual worlds exhibiting NFT art (and providing many more
possibilities around the virtual world). It appears that in
connection with trademarks, the NFT aspect is not the hardest to
grasp, but the proper classification of goods or services connected
with digital works of art.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.