Archives for January 2022

How to Do a Trademark Lookup – The COMPLETE GUIDE

January 24, 2022 by Michael Kondoudis

A trademark lookup and a Google trademark search can save you thousands of dollars and BIG legal headaches.

By Michael Kondoudis, Small Business Trademark Attorney

This is our complete guide to trademark lookups. If you need to lookup a trademark or learn all there is to know about trademark lookups this guide is for you.

CONTENTS

→ Why a trademark lookup is important

→ When to do a trademark lookup

→ Where to do a trademark lookup

II. HOW TO DO A TRADEMARK LOOKUP

→ How to do a trademark lookup in four steps

→ Do you need the help of a trademark attorney?

IV. FREQUENTLY ASKED QUESTIONS

ABOUT TRADEMARK LOOKUPS

What is a Trademark Lookup?

A trademark lookup is a search to check if a trademark is available for you to register, is already registered by someone else, and whether another business is using it. A trademark lookup includes a national search at the U.S. Patent and Trademark Office (USPTO), local trademark searches of various State trademark databases, and the Internet.

What Does a Trademark Lookup Do?

A trademark lookup is a search to make sure that your proposed trademark is distinctive and eligible for trademark registration with the U.S. Patent and Trademark Office (USPTO). Distinctiveness is one of the requirements for every trademark.

The purpose of a trademark lookup is to find marks that are the same or similar to yours and learn whether they have been registered with the USPTO. Similar trademarks can affect your ability to (1) register your trademark with the USPTO and (2) legally protect your trademark.

Why Do a Trademark Lookup?

A trademark lookup can help you avoid costly and time-consuming issues if someone else has already trademarked your name, logo, or phrase. Typically, only one business can own a name, logo, or phrase for an industry and it is almost always the one that trademarks it first. A trademark lookup can make the registration process go more smoothly.

Also, a trademark lookup can help find out if your mark is too similar to any one else’s trademark. When marks are too similar, the risk of trademark infringement grows.

Plus, a trademark lookup can help avoid the most common reason that a trademark is rejected by the U.S. Patent and Trademark Office – similarity to another trademark.

The top reason most common reason a trademark application is rejected by the U.S. Patent and Trademark Office is a “likelihood of confusion” with an existing trademark. A trademark lookup is a way to find roadblocks to your trademark before wasting your time, money, and effort branding your business with it. Also, trademark infringement is avoidable. Conducting a trademark lookup before starting your business can help you avoid these expensive and time-consuming mistakes.

The Top Five Reasons to Do a Trademark Lookup

1. To find out if your trademark is distinctive

2. To find if your trademark is similar to someone else’s

3. To find if your trademark infringes someone else’s

4. To find who owns a specific trademark

5. To make the registration process go more smoothly

Do You Have to Do a Trademark Lookup?

No, you do not have to do a trademark lookup. There is no legal or regulatory requirement that you perform a trademark lookup. A trademark lookup is optional – not required. Still, it is a good idea to do a trademark lookup/search before you use a mark in commerce or attempt to register the mark with the United States Patent and Trademark Office (USPTO).

Why Should You Do a Trademark Lookup?

A trademark lookup gives you a chance to pick a different trademark before wasting your time, money, and effort branding your business.

Looking up trademarks is an important step in protecting your brand and business. A trademark lookup can help you find out if anyone else has registered your trademark or is already using it. This information can help you decide whether to pursue trademark protection for your mark and avoid potentially costly infringement and rebranding.

If you start a business using a name that someone else has already registered or been using, you risk being sued for trademark infringement. Trademark infringement does not require intent – it can be unintentional. You may also be forced to rebrand. These expensive and time-consuming problems can sink a small business or startup.

Suppose you apply to the U.S. Patent and Trademark Office to register your name, and it is not available because someone else has already registered it. In that case, your application will be denied without a refund of the fees. Plus, you could be facing an infringement problem. A trademark lookup can help you avoid these costly problems.

Also, if you plan to apply to register your trademark, a trademark lookup can increase the chance that your application will be accepted.

So, there are many reasons to search a potential trademark, including:

to help determine the availability of your trademark for registration and use
to avoid infringing another business’s trademark
to avoid having to rebrandS

Do you need help with your trademark?

When Should You Do a Trademark Lookup?

You should do a trademark lookup as early as possible after you decide to adopt a trademark, and preferably before you begin using it, according to most authorities – including the United States Patent and Trademark Office (USPTO).

You should perform a trademark lookup before using a mark to avoid any possible trademark infringement claims. If you are forced to rebrand because your new mark infringes on someone else’s, you would lose your investment in your trademark and brand.

Also, you should perform a trademark lookup before you attempt to register the mark with the United States Patent and Trademark Office (USPTO). Adopting a trademark that you cannot legally protect with a trademark registration is not a smart business decision.

In the end, the timing of any trademark lookup or search depends on your particular circumstances. But, in almost all situations, you can never do a trademark lookup too early in the process of developing a product or business.

Pro Tip: Almost all of the time, it is best to do a trademark lookup as early as possible before you begin using a trademark.

Where Do You Do a Trademark Lookup?

You perform a trademark lookup by searching the U.S. Patent and Trademark Office (USPTO) trademark database, state trademark databases, and the Internet.

1. The USPTO Trademark Database – TESS

You start a trademark lookup with the USPTO trademark database, which includes all of trademarks that have ever been registered in the United States, along with marks that are pending or have been refused registration. This database is available via the USPTO’s Trademark Electronic Search System (TESS) located at: https://tmsearch.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk

2. State Trademark Databases

You continue a trademark lookup with each state trademark database, which includes only trademarks registered in that state. Here, it is important to keep in mind that you need to search beyond your state’s database.

3. Google Trademark Search

You complete a trademark lookup with a Google trademark search. Search for the elements that comprise your trademark. This step is critical to find common law trademarks (unregistered trademarks) that may conflict with your mark.

These are free resources, but they take time to visit and some knowledge and skill to search well.

Another option is to hire a trademark search company. This option is easier and faster than the free trademark lookup options but comes with costs, which vary by service provider. However, this trademark lookup option almost always returns better and more complete results than free DIY trademark lookups.

Where Do You Check Availability of a Trademark?

You can search all applied-for and registered trademarks free using the U.S. Patent and Trademark Office’s Trademark Electronic Search System (TESS).

You may also visit the USPTO’s Public Search Facility or a Patent and Trademark Resource Center to look up trademarks. These resources are free to the public.

HOW TO DO A TRADEMARK LOOKUP

How to Do a Trademark Lookup – The Four Steps of Every Trademark Lookup

A trademark lookup is a four-step process that involves a national trademark search, a state-by-state trademark search, an Internet trademark search, and a review of the search results. These four steps are how a trademark lookup is performed:

(1) Start with a USPTO trademark lookup by searching the USPTO’s trademark database using the Trademark Electronic Search System (TESS).

(2) Continue with a state-by-state trademark lookup by searching all 50 state trademark databases.

(3) Follow with a Google trademark search for evidence of use in commerce on websites and social media.

(4) Review the search results looking for any “likelihood of confusion.”

Trademark Lookup Step 1 – A USPTO Trademark Lookup

The Trademark Electronic Search System (TESS) is a database of all registered and applied-for trademarks in the United States. Each record in TESS consists of many searchable elements about each trademark. The chances of the USPTO rejecting your trademark and infringing on someone else’s are higher when shared elements exist.

To run a USPTO trademark search, use the USPTO TESS search engine available on the USPTO website at www.uspto.gov.

Enter your trademark into the search field to search the USPTO’s trademark database.

Beware: The USPTO will reject your trademark application if there is a “likelihood of confusion” with another registered mark. So, it is a good idea to search for exact matches and for any trademarks that are close to yours using variations of your trademark (e.g., different spellings, abbreviations, and plurals).

Trademark Lookup Step 2 – 50 State Trademark Lookups

To run a state trademark search, use a state’s trademark online search engine available on the state’s government website. The easiest way to find these sites is with an Internet search using the terms “State” and “trademark search.” Below is an example of the Maryland Secretary of State’s trademark search engine:

Enter your trademark into the search field to search for a state’s trademark database.

Be warned: State trademark registrations are only enforceable within a state. State trademark rights are not national like those that come with a USPTO trademark registration.

Do you need help with your trademark?

Trademark Lookup Step 3 – GOOGLE Trademark Search

Conduct a Google trademark search. Input search terms relevant to your trademark, business, product, services, and customers. A Google trademark search can return a high number of results. Pay particular attention to the search results returned by the search that relate to social media.

Surprisingly to some, it can be very effective to Google trademarks. The scope and reach of Google is tremendous. When you Google trademarks, you are using the best search algorithms and the Internet’s widest search tools.

Trademark Lookup Step 4 – Review the Search Results

Trademark searches can sometimes return hundreds of results, so it is important to narrow the results before reviewing them. This key is to identify trademarks that are relevant to your potential trademark, based on any “likelihood of confusion.” Here, it is advisable to consult with a trademark attorney because, as the United States Patent and Trademark Office warns, determinations of “likelihood of confusion” are “complicated.”

If, after searching trademark databases and the Internet, you find that a trademark is already in use for similar or related goods or services to your own, it may be best to opt for another trademark. Similarly, if the trademark isn’t registered but appears likely to conflict with other trademarks under trademark law principles (likelihood of confusion), trademark registration may not be a wise choice.

Do You Need an Attorney for a Trademark Lookup?

Yes. According to the United States Patent and Trademark Office (USPTO), deciding what to search for and interpreting your results can be complicated because there are so many factors to consider in determining any likelihood of confusion. Also, the USPTO is prohibited from (1) telling you how to do a clearance search for your mark, (2) searching for you, or (3) interpreting your search results.

That’s where trademark attorneys come in. We can do all of these things and give you legal advice about your brand.

Plus, the USPTO also warns that “you may wish to consider hiring a U.S.-licensed attorney to advise you throughout the application process.”

Note: If you are a foreign-domiciled applicant, you must have a U.S.-licensed attorney represent you at the USPTO.

In the end, while it may not be mandatory to consult with a trademark attorney when selecting or registering your trademark, it is a good idea. The trademark registration process involves investing time, money, and your brand. A trademark attorney can help you (i) decide whether a trademark is confusingly similar to yours, (ii) can help you with a trademark search, and (iii) help you register the trademark with the USPTO.

CONDENSED SUMMARY

To search for registered trademarks at the USPTO, visit the Trademark Electronic Search System (TESS) website. TESS provides access to registered marks and their respective trademark classes. There are 45 trademark classes, and they are divided into two categories: goods and services. Searches can also be conducted at the Patent and Trademark Resource Center.

When searching for a particular trademark on goods or services, it is important to use the USPTO’s tips to get the most accurate results. For example, when searching for a mark that is used on clothing, it is best to use the word “clothing” in the keyword search instead of just “apparel.” This will help to return all registrations that include the word “clothing” in the description of goods.

It is also important to note that inactive registrations and applications can be found in TESS. Inactive registrations are those that have not been used for five years or more and have not had any recent legal proceedings filed against them. If an individual is interested in using an inactive mark, they should file an application to revive the mark.

After conducting a search through TESS and the Patent and Trademark Resource Center, you may want to do further research on the availability of a trademark. This can be done by searching through state trademark registers and online resources that list common law trademarks.

A common law trademark is one that isn’t registered with the USPTO but is still used in commerce. Common law trademarks arise from the actual use of the mark and provide nationwide protection. The main disadvantage of common law trademarks is that they don’t have the same level of protection as federally registered trademarks. This means that common law trademarks can be challenged more easily.

To do a search for state trademarks, go to the website of the state in which you’re interested. Each state has its own trademark register. The website will usually have a search engine where you can input keywords to find registered trademarks.

There are also several online resources that list common law trademarks. One such resource is the United States Patent and Trademark Office’s (USPTO) database of Registered Trademarks Applied for and Used in Commerce. This database includes marks that are registered with the USPTO and marks that are protected under common law.

FREQUENTLY ASKED QUESTIONS

1. How do I look up trademarks for free?

To look up trademarks for free, you can use the Trademark Electronic Search System (TESS) on the United States Patent and Trademark Office (USPTO) website. You can also visit the USPTO’s Public Search Facility or a Patent and Trademark Resource Center near you. These resources enable you to search for registered or applied-for trademarks by keyword, including design elements if your mark includes one.

Also, they are free to the public.

If you’re not sure how to conduct a search, the USPTO has a number of resources to help you, including online tutorials and guides, and free in-person help at their Public Search Facility and Patent and Trademark Resource Centers.

2. Can I see if a name is trademarked?

Yes, you can see if a name is trademarked by using the trademark name search on the USPTO’s Trademark Electronic Search System. This search will show you all trademarks that include that name. So, if you are not sure if a name is trademarked, do a free search on TESS.

To search the USPTO’s trademark database, go to TESS. Choose a search option. If you are searching for a name, use the trademark name search. If you are searching for a design mark, such as a logo, you will first need to look up your design code using the USPTO’s Design Search Code Manual.

5. TRADEMARKS LOOKUP

What is trademarks lookup?

A trademarks lookup is a search for trademarks at the U.S. Patent and Trademark Office (USPTO). A trademarks lookup is a free way to search for trademarks that might be too similar to your mark. A close similarity between trademarks is one of the most frequent reasons why a trademark application is rejected.

Why do a trademarks lookup?

The main reason to do a trademarks lookup is to avoid the most common reason that a trademark is rejected by the U.S. Patent and Trademark Office (USPTO) – confusing similarity.

If your mark is so similar to a trademark that has already been registered that people are likely to get confused, the USPTO must reject your application.

So, by performing a trademarks lookup before you apply to register a trademark, you can see if someone else already registered that trademark or a similar one.

Why is a trademarks lookup important?

By doing a trademarks lookup can help you avoid wasting time and money on trademark applications that cannot be granted because of similarities to other trademarks. Trademark lookups save you money, time, and frustration.

TAKE THE NEXT STEP

Take the next step toward LEGALLY owning your trademark!

We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting your name, logo, or slogan, we invite you to book a FREE brand protection strategy session with us here.

Michael Kondoudis

For 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).

www.mekiplaw.com

NFT + Crypto + Metaverse Trademark Filing Tote Board

January 18, 2022 by Michael Kondoudis

By Michael Kondoudis, NFT Trademark Attorney

Last Updated on 5 October 2022

This page is a centralized hub of the latest information relating to NFT, Metaverse, and Crypto trademark filings at the United States Patent and Trademark Office (USPTO).

Here you’ll find:

→ NFTs: a chart and breakdown by month of NFT trademark application filings at the USPTO

→ METAVERSE: a chart and breakdown by month of Metaverse trademark application filings at the USPTO

→ CRYPTO: a chart and breakdown by month of Crypto trademark application filings at the USPTO

If you are interested in learning more about NFT trademarks, we invite you to read our Comprehensive Guide to NFTs and Trademarks.

If you are interested in learning more about trademarks in the Metaverse, read our Comprehensive Guide to Metaverse Trademarks.

NFT Trademark Filings

-BY MONTH–

Thus far in 2022, the USPTO has received over 4600 trademark applications that include or relate to NFTs.

In 2021, the USPTO received 2142 trademark applications that included or related to NFTs.

In 2020, it received just 18.

Here’s the monthly breakdown.

MONTH		APPLICATIONS FILED
September 2022		435
August 2022		512
July 2022		533
June 2022		720
May 2022		743
April 2022		876
March 2022		1064
February 2022		770
January 2022		637
December 2021		534
November 2021		425
October 2021		309
September 2021		140
August 2021		160
July 2021		87
June 2021		161
May 2021		117
April 2021		149
March 2021		78
February 2021		15
January 2021		4

Do you need help with your trademark?

METAVERSE Trademark Filings

-BY MONTH–

Thus far in 2022, the USPTO has received over 4600 trademark applications for Metaverse and/or virtual goods or services.

In 2021, the USPTO received 1890 trademark applications for Metaverse and/or virtual goods or services.

In 2020, it received just 155.

Here’s the monthly breakdown.

MONTH		APPLICATIONS FILED
September 2022		393
August 2022		422
July 2022		388
June 2022		538
May 2022		540
April 2022		574
March 2022		773
February 2022		573
January 2022		417
December 2021		369
November 2021		324
October 2021		149
September 2021		121
August 2021		114
July 2021		103
June 2021		111
May 2021		111
April 2021		121
March 2021		108
February 2021		113
January 2021		54

Do you need help with your trademark?

CRYPTO Trademark Filings

-BY MONTH–

Thus far in 2022, the USPTO has received over 4300 trademark applications for digital or cryptocurrency products or services.

In 2021, the USPTO received 3547 trademark applications for digital and/or cryptocurrency goods or services.

In 2020, it received just 1138.

Here’s the monthly breakdown.

MONTH		APPLICATIONS FILED
September 2022		367
August 2022		335
July 2022		403
June 2022		450
May 2022		549
April 2022		584
March 2022		609
February 2022		539
January 2022		481
December 2021		369
November 2021		324
October 2021		149
September 2021		121
August 2021		114
July 2021		103
June 2021		111
May 2021		111
April 2021		121
March 2021		108
February 2021		113
January 2021		54

Major NFT + Metaverse Trademark Filings

The interest in NFTs is growing all the time and that interest extends over myriad industries. Here’s the breakdown.

Sports

Callaway
Jerry Rice
Kobe Bryant
Muhammed Ali
Shaquille O’Neal

Hendrick MotorSports
UFC
TaylorMade
Cobra
Whitespace (Shaun White)
Draftkings

Celebrities / Pop Culture

Albert Einstein
Marilyn Monroe
Elvis Presley
Jay-Z

Lil Wayne
Andy Warhol
Dr. Oz

Movies / Television

A&E
American Psycho
Blockbuster
Hellraiser
John Wick

Spongebob Squarepants
The Texas Chainsaw Massacre
Star Trek
The History Channel

Beauty

Maybelline
Aveeno
Nutrageena
Clinique
Colgate

Hugo Boss
Kiehl’s
Redken
L’Oreal
Palmolive

Apparel

Athleta
Banana Republic
J. Crew
Old Navy
The Gap
Jack Wolfskin
Bulgari

Hugo Boss
Nike
Fila
Puma
Keds
Hush Puppies

Publishing

Allure
Bon Appetit
Entertainment Weekly
GQ
Self

Sports Illustrated
Vogue
Wired
Vanity Fair

Music

Bob Marley
Coachella
Grandmaster Flash
Kiss
Jay-Z
Lil Wayne
Stratocaster

Fender
The Band
Live Nation
Ticketmaster
Dolly Parton
Gene Simmons
Billie Eilish

Collectables / Toys

Bazooka
Baby Shark
Garbage Pail Kids
Entertainment Weekly

Rubik’s
Marvel Mightys
Hot Wheels
Upper Deck

Retail

Brookstone
Circuit City
Pottery Barn
Saks

Walmart
West Elm
Williams Sonoma
CVS

Food / Beverage / Restaurant

McDonald’s
Chuck E. Cheese
Panera
Panda Expres
Nextlevel Burger

Monster Energy
Slim Jim
Utz

Home Improvement

Scotts
Ortho

Miracle-Gro

Travel / Lesiure

Royal Caribbean International

Celebrity Cruises

Do you need help with your trademark?

List of NFT + Metaverse

Trademark Filings

-updated February 2022-

WORD MARK	OWNER	SERIAL NUMBER
Bob Marley	Fifty-Six Hope Road Music Ltd.	97272481
Old Navy	Old Navy (Apparel), LLC	97271953
Banana Republic	Banana Republic (Apparel), LLC	97271944
Athleta	Athleta, Inc.	97271938
J. Crew	J. Crew International, Inc.	97271870
Celebrity Cruises	Celebrity Cruises Inc.	97268832
Royal Caribbean International	Royal Caribbean Cruises Ltd.	97268772
Cruiseverse	Royal Caribbean Cruises Ltd.	97268715
Circuit City	C&R Holding Group, Corp.	97265984
Colgate	Colgate-Palmolive Company	97264283
Palmolive	Colgate-Palmolive Company	97264277
NYSE	NYSE Group, Inc.	97261560
Matbelline	L’Oreal USA Creative, Inc.	97260006
Kiehl’s Since 1851	L’Oreal USA Creative, Inc.	97255985
Dr. Oz	Oz Property Holdings LLC	97255519
Scotts	OMS Investments, Inc.	97254135
Miracle-Gro	OMS Investments, Inc.	97254133
Ortho	OMS Investments, Inc.	97254132
Star Trek	CBS Studios Inc.	97254052
Bulgari	Bulgari S.p.A.	97253264
Paneraverse	Pumpernickel Associates, LLC	97251535
Panera	Pumpernickel Associates, LLC	97251429
Kobe Bryant	Kobe, Inc.	97244916
Grandmaster Flash	Joseph Sadler	97244525
Blockbuster	Blockbuster L.L.C.	97229845
Pottery Barn Kids	Williams-Sonoma, Inc.	97231083
Pottery Barn Teen	Williams-Sonoma, Inc.	97231082
Pottery Barn	Williams-Sonoma, Inc.	97231081
West Elm	Williams-Sonoma, Inc.	97231080
Williams Sonoma	Williams-Sonoma, Inc.	97231079
Jack Wolfskin	Jack Wolfskin Ausrüstung für Draussen GmbH & Co.	97226225
Callaway	Callaway Golf. Co.	97226094
Draftkings	Draftkings, Inc.	97224577
Brookstoneverse	BKST Brand Holdings LLC	97221920
Gap	Gap (Apparel), LLC	97215886
Crocs	Crocs, Inc.	97212947
Coachella	Coachella Music Festival, LLC	97205715
Lil Wayne	Amschel de Rothschild II	97201507
Muhammad Ali	Muhammad Ali Enterprises LLC	92184622
Walmart	Walmart Apollo, LLC	97197296
The Texas Chainsaw Massacre	Vortex, Inc.	97197245
Jerry Rice	Rice, Jerry	97197064
Hendrick Motorsports	Hendrick Motorsports, LLC	97196519
Sports Illustrated	ABG-SI LLC	97185147
Shaq	ABG-Shaq, LLC	97184867
Marilyn Monroe	The Estate of Marilyn Monroe LLC	97184502
Elvis Presley	ABG EPE IP LLC	97184356
Self	Advance Magazine Publishers Inc.	97183965
Allure	Advance Magazine Publishers Inc.	97183964
Bon Appetit	Advance Magazine Publishers Inc.	97183963
Wired	Advance Magazine Publishers Inc.	97183962
Vanity Fair	Advance Magazine Publishers Inc.	97183961
GQ	Advance Magazine Publishers Inc.	97183959
Vogue	Advance Magazine Publishers Inc.	97183958
Fanatics	Fanatics, Inc.Ê	97156025
Yahoo	Yahoo Inc.	97166859
Estee Lauder	Estee Lauder Inc.	97159546
Nanette Lepore	BR Brand Holdings LLC	97132536
Brookstone	BKST Brand Holdings LLCÊ	97132536
JAY-Z	SC BRANDING LLC	97118641
Clinique	Clinique Laboratories, LLC	97115394
Live Nation	Live Nation Worldwide, Inc.	97089071
Ticketmaster	Live Nation Worldwide, Inc.	97089225
Albert Einstein	The Hebrew University of Jerusalem	97063114
Ring Pop	The Topps Company, Inc.	97072868
Mars Attacks	The Topps Company, Inc.	97072859
Garbage Pail Kids	The Topps Company, Inc.	97072832
Bazooka	The Topps Company, Inc.	97072828
American Psycho	Edward R. Pressman Film Corporation	90796288
Marvel Mightys	Marvel Characters, Inc.	90791278
Saks	Saks.com LLC	90789965
Hellraiser	Park Avenue Entertainment LLC	90780486
Hot Wheels NFT Garage	Mattel, Inc.	90767267
Entertainment Weekly	Entertainment Weekly, LLC	90751600
Life	TI Gotham Inc.	90751564
Kiss NFT	Kiss Catalog, Ltd.	90705581
John Wick	Lions Gate Entertainment Inc.	90688332
UFC	Zuffa, LLC	90667930
Stratocaster	Fender Musical Instruments Corp.	90626105
Fender	Fender Musical Instruments Corp.	90626068
Upper Deck	The Upper Deck Company	90604339
Andy Warhol	The Andy Warhol Foundation for the Visual Arts, Inc.	90602664

I. NFT Trademark Filings (by Month) (jump)

II. Metaverse Trademark Filings (by Month) (jump)

III. Major NFT + Metaverse Trademark Filings (by sector) (jump)

IV. List of NFT + Metaverse Trademark Filings (jump)

Ready to take the next step toward LEGALLY owning your NFT, Metaverse, or Crypto Trademarks?

We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting your NFT, Metaverse, or Crypto trademarks, we invite you to book a FREE brand protection strategy session with us here.

Michael Kondoudis

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).

www.mekiplaw.com

How To Trademark a Restaurant Name: An EASY GUIDE

January 16, 2022 by Michael Kondoudis

If you want to trademark your restaurant’s name but aren’t sure how to begin, just follow our five steps to restaurant trademark protection.

By Michael Kondoudis, Restaurant Trademark Attorney

This is our ultimate guide to registering a restaurant trademark.

Building a restaurant brand takes hard work, dedication, and investment. That is what makes your restaurant’s name so valuable.

But how do you safeguard this valuable asset? How do you protect a restaurant name and brand?

That’s where trademarks come in.

In this ultimate guide, we discuss protecting a restaurant brand with trademarks and answer important questions about trademarking a restaurant name. In fact, this is the information that we use to register restaurant trademarks for our clients.

So, if you’re ready to learn about restaurant trademarks, and how they can help protect a restaurant brand, this guide is for you.

Let’s dive in!

Trademark reg. no. 6,378,403 secured by The Law Office of Michael E. Kondoudis for Capitol City Brewing Company

Contents

Part I: HOW TO PROTECT A RESTAURANT NAME

How do you protect a restaurant name?
Protecting a restaurant name and logo Infographic
What is restaurant branding?
What is a restaurant trademark?
Do restaurants have trademarks?

Part II: HOW TRADEMARKS PROTECT RESTAURANTS

Do restaurants need trademarks?
How does a trademark protect a restaurant name?
Why should you trademark a restaurant name?

Part III: HOW TO TRADEMARK A RESTAURANT

Which parts of a restaurant brand can you trademark?
How long does it take to get a restaurant trademark?
When should you trademark your restaurant name?
How do you trademark a restaurant name?
The trademark class for restaurants

Part IV: RESTAURANT TRADEMARK SEARCHING

Why should you conduct a trademark search?
How do you do a trademark search?
How do you look up trademarks for restaurant names?

Part V: TIPS TO GET THE BEST RESTAURANT TRADEMARK

Part VI: DO YOU NEED TO WORK WITH A TRADEMARK ATTORNEY

Do you need a trademark attorney?
Reasons why you should consult with a trademark attorney

PART VII: FREQUENTLY ASKED QUESTIONS

How do you search for trademarked restaurant names?
Do you need an attorney to trademark a restaurant name?

I. How to Protect a Restaurant Name

How Do You Protect a Restaurant Name?

The best way to protect a restaurant name is to trademark the name (and any logo you might use to promote your restaurant). Trademarks protect brands, including restaurant brands. Trademarking your restaurant name is the most effective way to protect it because a trademark prevents competitors from using the same or similar name.

Also, when you trademark a restaurant name, you confirm your legal ownership of it, as well as your exclusive rights to it.

Can you legally protect your restaurant name?

Yes, you can legally protect your restaurant name with a trademark. Trademarking your Restaurant Name is official confirmation from the U.S. Government that you legally own it. Legal ownership of your restaurant name ensures name recognition and helps create a unique and recognizable brand.

Can you trademark a restaurant name?

The answer is YES. You can trademark a restaurant name, and many names of restaurants are trademarked! Trademarking the name of your restaurant (or bar) is the most effective way to protect it and the brand identity you’re building.

How do I protect my restaurant name?

You protect your restaurant name by trademarking it. Trademarking a restaurant is the best way to protect it. A restaurant trademark will protect your restaurant name and logo throughout the U.S. and ensure that they remain exclusively yours to use. Restaurants are prime candidates for trademark protection.

You trademark a restaurant name by submitting an application to the U.S. Patent and Trademark Office (USPTO). To qualify for a U.S. trademark for your restaurant’s name, you will need to show that no one else has already trademarked it and that you are using it in commerce.

Protecting A Restaurant Name and Logo

(click to download)

What is Restaurant Branding?

A restaurant brand is what your restaurant is all about. Restaurant brands are how your patrons and customers will remember you. The best restaurant branding:

• expresses your restaurant’s identity and personality
• creates an emotional connection with patrons and guests
• invites new guests to your brand through marketing

What is a Restaurant Trademark?

A restaurant trademark is a badge of origin that tells your customers that your restaurant services come from you and not your competitors.

A trademark can be any word, phrase, symbol, or design that identifies you as the source of your products or services. Brand names, slogans, and logos are all examples of trademarks.

A restaurant trademark:

• Confirms your legal ownership of your restaurant name
• Identifies you as the source of your restaurant services
• Prevents anyone else from trademarking the same or similar restaurant name for their business
• Is a strong tool to stop copycats and keep your restaurant name uniquely yours.

Trademarks prevent consumer confusion by ensuring that other restaurants and restaurant-related businesses do not use the same or similar name or symbol.

What is a federal trademark?

A Federal trademark is an enhanced trademark that has been certified by the U.S. government. It comes with exclusive nationwide legal rights.

A federally registered trademark, such as “Panera” or “McDonald’s,” is one that has been approved by the US Patent and Trademark Office (USPTO), and is often indicated with the ® trademark symbol.

Do Restaurants Have Trademarks?

Yes, restaurants have trademarks.

The name of your restaurant serves as a trademark.

The logo that you use to promote your restaurant serves as a trademark.

The slogan that you use to promote your restaurant serves as a trademark.

The names of your food and beverage items serve as trademarks, so long as they are unique.

II. How Trademarks Protect Restaurants

Do Restaurants Need Trademarks?

Yes, restaurants need trademarks. Whether you’re opening a new restaurant or already own one, you need to register your trademark with the United States Patent and Trademark Office (USPTO). You can ensure that your restaurant name, logo, slogan, and brand stay yours with a trademark. Without a trademark, anyone can copy your restaurant name, concept, and brand. These are just some of the reasons you need a trademark for your restaurant.

Stop Worrying About Your Trademark

Schedule a Free Strategy Call

See How My Law Firm Can Help You Protect Your Trademark

New Applications – Legally own your trademark.

Office Actions – We can navigate the trademarking process at the USPTO.

Enforcement – Flex your trademark rights. Stop copycats.

How Does a Trademark Protect a Restaurant Name?

Trademarking a restaurant name protects it in four ways:

1. A trademark will help prevent any other restaurant from using your restaurant name. This is an essential step in building your restaurant brand.

2. Also, trademarking a restaurant name confirms YOUR legal ownership of it and how it is used. This means that no one can take it from you, and no one will be able to force you to rebrand.

3. Plus, trademarking your restaurant name prevents anyone else from registering it for their restaurant. This makes trademarking great insurance against having to rebrand.

4. Lastly, trademarks are essential for restaurants looking to franchise or open additional locations.

Remember: If you don’t trademark your restaurant name, you won’t have exclusive rights. Other restaurants could use your name and logo or ones that are really close.

Is trademarking important for a restaurant with just one location?

Yes. Restaurants with a single location are less likely to survive a forced rebrand if someone else registers their name or logo and takes it. This can and does happen. Plus, most regional and national restaurant chains started with a single location. Trademarking a restaurant name becomes very important for expansion into multiple locations or franchising.

Why Should You Trademark a Restaurant Name?

A restaurant trademark helps create a unique and recognizable brand and increases customer awareness. A restaurant trademark ensures that your restaurant trademark stays yours. A restaurant trademark prevents anyone else from trademarking the same or similar name for their restaurant. A restaurant trademark helps avoid future legal disputes, which can be costly.

III. How To Trademark A Restaurant

Which Parts of a Restaurant Brand Can You Trademark?

Several parts of a restaurant brand are eligible for trademark protection. You can trademark your restaurant name, product names, a logo, and any slogan you use to promote your foodservice business. Examples of restaurant trademarks are:

Brand Names

Product Names

Slogans

McDonald’s

Big Mac

I’m Lovin’ It

• Brand names like McDonald’s

• Product names like Big Mac

• Slogans like I’m Lovin’ It

• Logos like the Golden Arches

How Long Does It Take to Get a Restaurant Trademark?

It takes between 8-12 months to get a restaurant trademark, in most cases. The trademarking process for restaurant names is a legal process that takes about a year. The first step is applying to the USPTO, where an examining attorney examines whether your restaurant’s name qualifies for registration. Your restaurant name may not qualify if another restaurant is already using it or has registered it. If the application qualifies, it will be “published for opposition” for 30 days to give potential opponents a chance to oppose.

When Should You Trademark a Restaurant Name?

Most authorities agree that the best time to trademark a restaurant name is BEFORE opening.

The US is one of the few countries that allow you to protect your restaurant’s trademarks before you begin using them. Trademarking restaurant names BEFORE opening is an opportunity to:

• reserve a restaurant name and avoid having to change your name later

• confirm that your restaurant name does not infringe on another restaurant with a registered trademark

• complete an important branding task before operations begin.

If your restaurant is already open for business, you should start the process to trademark a restaurant name as soon as possible. If you don’t trademark your restaurant name, someone else could trademark it and force you to rebrand and start all over. Plus, the trademarking process can take about a year, so if you find a copycat, you could have to wait almost 12 months to stop them. When it comes to restaurant trademarks, sooner is better.

How To Trademark a Restaurant?

You trademark a restaurant name by applying to the U.S. Patent and Trademark Office (USPTO) and getting your application approved for registration. Trademarking a restaurant name is a legal process that usually takes about 12 months. So, the sooner you start the process to trademark a restaurant name, the better.

How to Trademark a Restaurant Name in 5 Steps

Want to trademark your restaurant name but aren’t sure how to begin? Here are 5 steps to trademark your restaurant’s name.

(1) Pick a unique name for your restaurant.

(2) Do a trademark search for your restaurant name.

Find out if anyone else has registered your restaurant name (or anything close) by searching the USPTO’s database of all registered and pending trademarks (more on that below).

(3) Prepare your restaurant trademark application.

Collect the required information and build a brand protection strategy for your restaurant trademark.

(4) Complete and file your restaurant trademark application with the U.S. Patent and Trademark Office (USPTO).

You can file your restaurant trademark application online using the USPTO’s Trademark Electronic Application System (TEAS). Read our Complete Guide to TEAS Plus here.

(5) Monitor the progress of your restaurant trademark application.

Navigate the trademark examination process and work with the trademark examiner.

The USPTO will add your restaurant trademark to the list of Federal (registered) trademarks IF your application satisfies all of the requirements of the Federal Trademark Statute.

What is the Trademark Class for Restaurants?

The USPTO categorizes all products and services into 45 separate classes. The trademark class for restaurants is International Class 43. Class 43 is for Restaurant and Hotel Services and includes restaurant-related products and services. And, because the trademark class for a restaurant name is Class 43, an application to register a restaurant name should be filed in that trademark class.

IV. Restaurant Trademark Searching

Why Should You Conduct a Trademark Search for Your Restaurant’s Name?

You should do a trademark search for your restaurant’s name for several reasons.

(1) You should do a trademark search for your restaurant’s name because it can help you avoid picking a name that someone else has already trademarked and is already taken. If you use a restaurant name that is already trademarked and in use, you might be charged with infringing someone else’s trademark.

(2) You should do a trademark search for your restaurant’s name because it can ensure that you will not be forced to rebrand in the future. No one wants to receive a cease and desist letter from another business after investing money in signs, menus, websites, and advertising.

(3) You should do a trademark search for your restaurant’s name because it will help you pick a name for your restaurant that you can own and protect with a trademark. If you use a restaurant name that other restaurants are using, you won’t be able to trademark it for yourself. You won’t legally own it and won’t be able to stop anyone from copying the restaurant name.

When starting a new restaurant, it is important to ensure that your restaurant name is unique and that no one else is already using it. Otherwise, you risk costly litigation and potentially having to rebrand, which can be financially devastating.

Your restaurant’s name will function as a trademark, which identifies the source of your restaurant’s service and distinguishes it from the competition. It is critical that the name of your restaurant is unique and that no one else is using it. A restaurant trademark name search is the only way to ensure that your restaurant name is unique and protectable.

Stop Worrying About Your Trademark

Schedule a Free Strategy Call

See How My Law Firm Can Help You Protect Your Trademark

New Applications – Legally own your trademark.

Office Actions – We can navigate the trademarking process at the USPTO.

Enforcement – Flex your trademark rights. Stop copycats.

How Do You Do a Trademark Search for Trademarked Restaurant Names?

The best way to do a restaurant trademark search is to follow this four-step process:

(1) search the Internet using search engines
(2) search the U.S. Patent and Trademark Office trademark database
(3) search social media
(4) search State trademark and corporation databases

1. Search Internet

This is the easiest search tool and a good place to start. A series of Google searches of the exact restaurant name you want (and similar variations) can be very effective. After all, almost all restaurants have a website. Plus, Internet search engines can find them for you, even if they are far away from your restaurant location.

2. The U.S. Patent and Trademark Office (USPTO) trademark database

The USPTO maintains a searchable online database of all registered trademarks and pending applications. The USPTO’s website allows for searching by name and class, and through it, you can investigate:

• Trademarks currently registered with the USPTO
• Trademarks that are in the application process
• Old trademarks that are no longer registered

Pro Tip: The USPTO website permits simple word searches and more targeted searches using “classes,” which are USPTO categories for products and services. It is often advantageous to include the service category for restaurant trademarks, which is Class 43 (Restaurants and Hotels) in searches. Use this search parameter to return the more relevant search reports.

3. Social media

Social media is another way to find smaller restaurant-related businesses that might already be using your restaurant name.

4. State corporation commission databases

Every state maintains an online database of all corporations, limited liability companies, partnerships formed or registered to do business in the state, including those that operate restaurants. These databases usually include DBAs and fictitious names as well. These business formation databases are usually searchable through the Secretary of State website for a state.

Pro Tip: Restaurant names do not need to match exactly to conflict. The legal standard for trademark infringement is something called “confusing similarity,” which is based on whether potential customers might mistakenly believe that two different businesses are related or affiliated. This means that:

1. a restaurant trademark search should include more than just other restaurants. ANY other company involved in food, food service, or hospitality might be relevant to your search. For this reason, be sure to search for restaurant-related businesses, such as bakeries, bars, caterers, coffee shops, food manufacturers, and maybe even grocery stores.

2. a restaurant trademark search should look for more than just exact matches to your restaurant name. For example, a restaurant named Bob’s Pizza could conflict with a business operating under the name Robert’s House of Cheeses.

How Do You Lookup Trademarks for Restaurant Names?

You can look up trademarks, including trademarks for restaurant names, on the U.S. Patent and Trademark Office’s (USPTO) website at www.uspto.gov. You can search trademark names for restaurants online using the USPTO’s Trademark Electronic Search System (TESS) on its website. This is how to search trademark names for restaurants. This is best way to check if a business name is trademarked.

The USPTO’s TESS system allows you to search for business names in:

• Trademarks that are currently registered with the USPTO

• Trademarks that are in the process of being registered

• Old trademarks that are no longer registered

IF you find your business name in (1) or (2), then there is a good chance that your business name is taken. You should investigate the trademark owner.

IF you do not find your name in (1) and (2), or only in (3), then there is a good chance that your business name is not taken.

V. Tips To Get The Best Restaurant Trademarks

If you’re a restaurant owner, you should definitely consider trademarking the name of your restaurant.

A restaurant trademark protects your restaurant’s name and logo and prevents competing restaurants from copying or using them. Also, a restaurant trademark boosts customer awareness and helps you stand out from the competition. Plus, getting a trademark for a restaurant comes with the peace of mind that you legally own your brand. So, there are many reasons that you should want to trademark a restaurant name.

Getting a restaurant trademark is not easy, however. Read on to learn about our tips for how to get the best restaurant trademark.

Tips to Get the Best Restaurant Trademark

1. Understand the Differences Between Trademarking and Copyrighting

2. Appreciate How a Restaurant Trademark is Valuable

3. Understand the Basics of How to Trademark a Restaurant Name

4. Work with a Trademark Attorney

Tip #1 Understand the Differences Between Trademarking and Copyrighting

Understanding the differences between trademarks and copyrights is important when it comes to protecting your restaurant name.

Trademarks identify and distinguish a business and its services from other companies. The best restaurant trademark is a registered Federal trademark. Registered trademarks are administered by the United States Patent and Trademark Office (USPTO) and are designated with the ® symbol.

Copyrights protect creative works like TV shows, books, photographs, and music by prohibiting others from copying them. The best copyrights are registered copyrights. Copyrights are administered by the Library of Congress. Copyrights do not protect restaurant names because restaurant names are not creative works.

Tip #2 Appreciate How a Restaurant Trademark is Valuable

When you trademark a restaurant name with the USPTO, you become the official, legal owner of your brand. No one can take it from you, and you won’t have to worry about being forced to rebrand. Also, your trademark will block applications filed by other restaurants for the same or similar trademarks.

A restaurant trademarking is even more important if you are considering expanding to multiple locations or franchising your restaurant concept.

Tip #3 Understand How to Trademark a Restaurant Name

Starting the process to trademark a restaurant name is fairly straightforward. Here are the most essential steps to start the process to trademark a restaurant name:

1. Check with the USPTO to see if your intended name is already registered or pending by performing a preliminary search for your restaurant name in the USPTO’s database of all registered and pending trademarks.

2. Identify which products and services you can protect with a trademark.

3. Make strategic decisions about whether to apply based on “actual use” or “an intent to use” and whether to seek broad or narrow protections.

4. File your application online using the USPTO’s Trademark Electronic Application System (TEAS).

5. Pay your application fee, which is currently $350 per class of products and services.

6. Follow up and monitor your application. The trademarking process can take up to a year or more. If the USPTO makes any rejections, you will have six months to respond to them.

VI. Do You Need A Trademark Lawyer

Do You Need a Trademark Attorney to Protect a Restaurant Name?

No, but the U.S. Patent and Trademark Office strongly recommends that all applicants work with a trademark attorney – for several reasons. (see below).
Remember, the trademarking process is much more than just filling out online forms (that’s the easiest part of the process). The USPTO will only grant your application after meeting all of their many legal and procedural requirements.

Need to trademark a restaurant name?

Why Should You Work With a Trademark Attorney to Protect Your Restaurant Name?

Filing a trademark application with the USPTO to register your restaurant starts a legal process that can get complicated, expensive, and confusing. Working with a trademark attorney can make the process smoother, faster, and result in better protection.

Also, studies show that working with a trademark attorney can increase your chances of successfully trademarking your brand by over 50%.

If you own a restaurant, it’s probably in your best interest to trademark your restaurant name. Filing a trademark isn’t a simple process, but the protection it affords your brand is worth your time and effort. If you do it correctly, you can secure your brand for years to come.

VII. Frequently Asked Questions

1. Why should you protect your restaurant name and brand?

Protecting your restaurant’s name is important for several reasons, including:

- Solid branding and control over your brand
- Easier expansion/franchising
- Fewer disputes over time

Solid Branding: The goal of a unique name and branding is to distinguish your brand and stand out. The legal rights that come with trademark registration mean that you can control who uses your brand and how it is used. Legally protecting your restaurant name and brand is the surest way to protect what makes your restaurant yours.

Easier Expansion Later: While this may seem hard to imagine for a brand-new restaurant business, most franchises started as a single location — and you set yourself up for growth down the line when you protect your name. When your name is protected now, it’s also protected later when you expand and open additional locations. Remember, the primary legal right that you are granting to your franchisees is the right to use your trademarks to market and sell the goods or services under your brand.

Fewer Copycats: There’s nothing more discouraging than having your ideas stolen. When you don’t take the necessary precautions to protect your Restaurant Name and Brand, you make it all too easy for someone else to steal them. The legal protections that come with trademarks tend to scare away imitators.

2. How do you protect a restaurant name and brand?

The simplest and best way to protect your Restaurant Name and Brand is to acquire nationwide rights as early as possible by trademarking them.

3. What is a trademark?

Trademarks are badges of origin. They identify and distinguish the products or services of one enterprise from those of another.

Any word, phrase, symbol, or design that identifies you as the source of your products or services can be a trademark. Brand names, slogans, and logos are all examples of trademarks.

A trademark:

- Identifies you as the source of your goods or services.
- Provides legal protection for your brand.
- Helps you guard against counterfeiting and fraud.

Read more about trademarks here.

4. Why do you want to trademark a restaurant?

Trademarks identify your business, They are how customers recognize you in the marketplace and distinguish you from your competitors, which is important to establishing a foothold in any market. They help ensure that all of your marketing is to your benefit and not to the benefit of a copycat.

Trademarking your Restaurant Name and Brand would give you the exclusive right to use it and stop others from marketing identical or similar products under the same or a confusingly similar mark. So, for example, only one company can open a Shake Shack, a Taco Bell, or a Jimmy John’s.

Additionally, Nationwide trademark protection is great insurance against have being forced to rebrand.

These protections, and others, help restaurants franchise their brands.

5. What other parts of restaurant brand can you trademark?

Several parts of a restaurant brand are eligible for trademark protection. You can trademark your restaurant name, product names, a logo, and any slogan you use to promote your business. Whether you own a restaurant, a food truck, or an online food delivery service, these brand elements are the face of your brand should be protected.

Brand Names:

McDonald’s, Domino’s Pizza, Dairy Queen, Blue Apron

Product Names:

Big Mac (McDonald’s), Blizzard (Dairy Queen), $5 foot long (Subway)

Logos:

The golden arches (McDonald’s), the red, white and blue domino (Domino’s Pizza), the DQ logo (Dairy Queen) and the blue apron (Blue Apron)

Slogan:

I’m Loving It (McDonald’s), We have the meats (Arby’s), Eat Fresh (Subway)

6. What parts of a restaurant brand cannot be trademarked?

Not everything that makes up your restaurant brand can be trademarked. Recipes cannot be trademarked, although the names of the recipe might. Business models and operating procedures also cannot be trademarked.

7. When should you trademark your restaurant?

Most authorities agree that the best time to trademark a Restaurant Name and Brand is BEFORE opening.

We are one of the few countries that allow you to protect your restaurant’s trademarks before you begin using them. Filing for registration before opening is an opportunity to:

- reserve a name and avoid having to change your name later
- confirm that your name does not infringe on another restaurant with a registered trademark
- complete an important branding task before operations begin.

8. How do I trademark a restaurant name?

Here’s how to start the process to trademark a Restaurant Name and Brand:

Select a unique name and logo. Read more about how to pick a strong trademark here.
Check whether anyone else has registered or applied to register the name and logo
Collect the required information and decide on a trademarking strategy
Prepare 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 with your channel name. Read more about trademark symbols here.

The USPTO will grant your application and add your trademark to the list of Federal (registered) trademarks IF your application meets all of the requirements of the Federal Trademark Statute. If the USPTO does not initially grant your application (which happens over 80% of the time), you would need to respond to the reasons for the rejection.

9. Can you copyright a restaurant name?

No. You cannot copyright a restaurant name. You can trademark it, however.

Copyrights protect creative works like books, films, or artwork, and prohibits copying without permission. Since restaurant names aren’t creative works, you don’t need to worry about knowing how to copyright your restaurant’s name. Instead, you need to register your trademark with the United States Patent and Trademark Office (USPTO) as soon as possible to set the table for success.

10. Do you trademark or copyright a restaurant name?

You trademark restaurant’s name. The name for your restaurant serves as a trademark, which identifies the source of a service, including restaurant services, and distinguishes them from those provided by others.

Take the Next Step and Legally

Own Your Trademark

Schedule a Free Strategy Call

Take the Next Step Legally Own Your Trademark

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Michael Kondoudis

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).

www.mekiplaw.com

Trademarks and the Metaverse: The ULTIMATE GUIDE

January 12, 2022 by Michael Kondoudis

By Michael Kondoudis, Metaverse Metaverse Attorney

This is a COMPLETE guide to trademarks and the Metaverse.

Most business owners and entrepreneurs know the importance of trademarks. But how do you legally protect those trademarks in the Metaverse?

This guide has the answers.

So if you want to:

Understand the basics of the Metaverse
Why businesses need to prepare for the Metaverse
How to use the Metaverse for profit
How to prepare and safeguard your brand for the Metaverse
Learn about trademarking brands
Discover how to leverage trademarks in the Metaverse

Then this guide is for you.

Let’s get started.

CONTENTS

I. THE BASICS OF THE METAVERSE

II. HOW BUSINESSES CAN USE THE METAVERSE

III. HOW TO PROTECT YOUR BRAND IN THE METAVERSE

IV. HOW TO PREPARE FOR THE METAVERSE

PART I: THE BASICS OF THE METAVERSE

In this section, we’ll explore the Metaverse and what makes it so important to the future of business.

What does the word “metaverse” mean?

The term “metaverse” literally means “beyond the universe.”

What is the Metaverse?

At its most basic level, the Metaverse will be a virtual and immersive world that parallels our own. It will be inhabited by digital representations of people, places, and things, and users will be able to experience digital lives that mirror their real lives in many respects. Users will communicate, share, and work with others and interact with elements in the virtual world – just like we do in the physical world.

Features of the Metaverse

The potential of the Metaverse will only be limited by technology – for now. In the future, the only limits will be users’ imaginations. The primary features of the Metaverse ensure this limitless potential.

Some of the features of the Metaverse are:

1. Persistence: The Metaverse will always be “on.” It won’t be reset, rebooted, or unplugged. Users will enter and leave it at will, and content will always be available. This constant availability will provide a continuity that will enhance users’ experiences.

1. Immersion: Users in the Metaverse will experience a new level of immersive and interactive experiences on par with the real world. As VR and AR technologies improve, so too will users’ sensory experiences. There will be a time when the Metaverse will engage users’ senses as much as in the real world.

1. Decentralized: In contrast to today’s social media companies, no single entity or entities will have control over the Metaverse. It will be more like the Internet and less like social media platforms.

1. Virtual Marketplaces and Economies: The Metaverse will permit users to participate in virtual marketplaces – including those of ideas, culture, art, and business. These marketplaces will allow users to buy, sell, and share digital assets like NFTs, virtual real estate, event tickets, information, and virtual goods. This is the future importance of digital currencies.

1. Amplified social experiences: The Metaverse will empower users to build social links with users and AI entities. Through these links, users will share information, content, and ideas and “co-experience” virtual events.

1. Boundless opportunities: Because it will be virtual, the Metaverse will not suffer from the limitations and barriers of the real world. It will be an endless virtual space with extreme accessibility from anywhere at any time.

Why should businesses care about the Metaverse?

Businesses should care about the Metaverse because retail will be one of the largest sectors in it, with social experiences a close second.

Businesses should also care about the Metaverse because it will impact their marketing and branding. For example, information and analytics collected from the Metaverse can be leveraged to increase sales in the real world. Plus, the Metaverse will be a new market for products and services.

The Metaverse will impact marketing because it will be an opportunity (1) to reach customers in an entirely new dimension and (2) to collect consumer information based on how users behave and act in the Metaverse. These new connections and information can then be leveraged to increase sales and brand awareness in both the real world and the virtual world of the Metaverse.

Think about it. The Metaverse will be a world that exists in parallel to our own. It will be inhabited by users living second lives – wholly digital lives – that parallel their real lives. Users will interact with other users, engage in commerce, travel, learn, and consume content – just like in the real world. It will be an untapped market with digital users ready to buy your products and services.

The Metaverse will impact branding. As the Metaverse grows and matures, branding and advertising opportunities will increase. Examples of the opportunities that await in the multiverse include:

- virtual retail stores (signage and displays)
- virtual popups (special events to engage and network)
- virtual training/classes (branded content and sponsorships)
- metaverse events (concerts and performances)
- digital products (NFTs and virtual clothing for user avatars)
- product placements (branded products in games and virtual billboards).

Basically, anywhere we can use branding in the real world will have a digital partner in the Metaverse.

Who is trademarking brands for the Metaverse?

It seems that everyone is getting ready for the Metaverse. The number of brands applying to trademark their brands for Metaverse grows every month. Here are just a few of the first:

Footwear

• Nike

• Converse

Entertainment Brands

• Ticketmaster

• Elvis Presley Enterprises

Sports

• Jerry Rice

• Hendrick Motorsports

Toy Brands

• Hot Wheels

• Bazooka

Retail

• Walmart

• Saks

Publishing

• Sports Illustrated

• Vanity Fair

Do you need help with your trademark?

When can we expect to see the Metaverse?

Authorities estimate that it may not be until 2030 for Metaverse to really take off. Still, aspects of the Metaverse currently exist. Ultra-fast broadband speeds, virtual reality headsets, and persistent always-on online worlds are already up and running, even though they may not be accessible to all. Plus, forward-thinking companies are already preparing their brands for the Metaverse.

PART II: HOW BUSINESSES CAN USE THE METAVERSE

In this section, we’ll explore some of the ways businesses can use the Metaverse to increase revenue and expand brands.

The Metaverse will provide increasingly immersive experiences as it matures and evolves. But, in some ways, the Metaverse is already here, and forward-thinking companies are already offering more and more Metaverse-like experiences.

Examples of Metaverse-like experiences

The National Football League (NFL) has opened a virtual store in the online video gaming platform Roblox. The NFL’s virtual store sells virtual team jerseys and helmets to Roblox players.

• Nike has also opened a new world on the Roblox gaming platform. This digital realm, named Nikeland, offers Roblox users official digital Nike-branded clothing for their avatars, along with mini-games and other “co-experience” events.

• Gucci has turned to the Roblox gaming platform to host a virt100th-anniversary celebration event.

• Burberry has ventured into the Metaverse by collaborating with the video game Honor of Kings to place digital Burberry designs into the gameplay.

Top 7 ways a business can use the Metaverse

The opportunities that will be available in the Metaverse are seemingly infinite, and many haven’t even been conceived of – yet. Still, the Metaverse offers important opportunities for today and in the near future.

These are the top seven ways businesses can leverage the Metaverse:

1. Selling virtual goods – It is estimated that more than $100 billion was spent on virtual products in 2021. More importantly, this $100 billion reflects just a sample of the growing opportunity for businesses to generate revenue in the Metaverse.

2. Virtual Showrooms or vStores – vStores allow customers to take tours of showrooms and interact with all kinds of objects, including products. This ability to visualize and interact with products, such as furniture, cars, fashion, and NFT assets, can happen entirely in the Metaverse – without the burden of a brick-and-mortar footprint.

3. Product Sales Training – The Metaverse will offer “co-experience” events, including training and education seminars. Repetitive training, such as product demos and sales techniques, can be held in the Metaverse at almost no cost.

4. Customizers + Configurators – Because the Metaverse will be immersive, businesses will be able to show their customers “virtual demos” of customized products, such as furniture, automobiles, homes, and commercial spaces.

5. Reducing Returns and Higher Sustainability – With virtual tours and reveals, customers can better visualize products before buying them, which reduces returns and exchanges. Fewer returns lowers overhead and is good for the environment.

6. Lowered Research and Development Costs– Virtual prototypes in the Metaverse will reduce the need for physical prototypes and samples.

7. Advertising – The Metaverse will offer endless opportunities for brand placement in games, signage in virtual stores, and digital products.

PART III: HOW TO PROTECT YOUR BRAND IN THE METAVERSE

In this section, we’ll go over the basics of the trademarking process and how to trademark NFTs

How do you protect a brand in the Metaverse?

The best way to protect a brand in the Metaverse is to trademark the name, logo, and any phrase or slogan that you use to promote your virtual products and services. Trademarks protect brands, including brands in the Metaverse. Trademarking your brand’s name, logo, and phrase for virtual goods and services is the best way to protect it.

Can you legally protect your brand in the Metaverse?

Yes, you can legally protect the name and logo of your virtual products and services with a trademark. Trademarking your virtual product name is official confirmation that you legally own it.

How do you legally protect your brand in the Metaverse?

The most effective way to protect the name of your virtual product or service is to trademark it. Trademarking your virtual product name will protect it by giving you exclusive rights to use it and preventing others from using the same or similar name in the Metaverse.

Trademarks in the Metaverse = Protection for virtual goods and services

What exactly is a trademark?

A trademark is a distinctive word, symbol, or phrase that differentiates the source of goods (or services) from one enterprise from those of others. Trademarks represent brands and protect brands, including brands in the Metaverse. Buyers use trademarks to pick among brands of products and services.

What can you trademark for the Metaverse?

The most common Metaverse trademarks are words (names), phrases, logos, and designs.

Should you apply for a Metaverse trademark?

Yes, if you have a trademark, you should file for a Metaverse trademark. Filing for your trademark in the Metaverse right now is the best way to prevent anyone else from trademarking it for their Metaverse business. Plus, getting a Metaverse trademark ensures that your mark is protected in the virtual world. So, you should file for Metaverse trademarks.

How do trademarks protect brands in the Metaverse?

Trademarks protect a company’s identity and the reputation that it builds in its brand, including in the Metaverse. Also, trademarking your brand is a powerful way to identify and distinguish it from the competition, which:

- makes it easier and less expensive for customers to find your products

- reduces the cost of marketing

- builds your brand identity

Brand identity and distinction will be critical in the immersive world of the Metaverse.

Top three reasons to trademark a brand for the Metaverse

Trademarking your brand for the Metaverse will prevent anyone else from trademarking the brand and taking it from you.

1. It will prevent anyone else from registering the same or similar name for their brand in the Metaverse

2. It will increase customers confidence in your brand, which increases trust and value

3. It is a powerful tool to stop unauthorized use of your brand by copycats in the Metaverse

Where do you get a Metaverse trademark?

You get a Metaverse trademark from the U.S. Patent and Trademark Office (USPTO). To get a trademark for the Metaverse, you need to apply to the USPTO and then navigate an examination process. Metaverse trademarks are granted by the USPTO.

How to get trademark protection in the Metaverse?

Filing for a Metaverse trademark at the U.S. Patent and Trademark Office (USPTO) has four main steps:

1. Clearing the trademark through a professional trademark search,

2. Preparing and applying a strategically crafted trademark application,

3. Navigating the application examination process at the United States Patent and Trademark Office (USPTO), and

4. Properly using your trademark on your digital products and services.

When should you trademark your brand for the Metaverse?

Most authorities agree that in most situations, it is best to file new trademark applications early – even before a business begins selling or marketing in the Metaverse.

Firstly, the trademarking process can take up to 12 months in most cases. So, starting as early as possible will reduce unprotected sales in the Metaverse.

Secondly, filing early reduces the chance that another business has applied to trademark your brand for the Metaverse. Most businesses don’t know that every day of delay is a risk that someone else might apply to register a trademark similar to theirs. If that happens, the USPTO may refuse to register your Metaverse trademarks. Thousands of new applications are filed every day, so waiting for as little as a few weeks can become a risk.

If you have a trademark, you should file for a Metaverse trademark as soon as possible. Filing for your trademark in the Metaverse right now is the easiest way to avoid a costly legal fight over ownership of your trademark in the Metaverse. So, you should file for a Metaverse trademark right now.

What are some products to include in a trademark application for the Metaverse?

• virtual goods

• goods for use in online environments, virtual online environments, and extended reality virtual environments

• downloadable software for users to search, browse, view, and purchase virtual goods,

• retail store services featuring virtual goods

• entertainment services, namely, providing online, non-downloadable virtual goods

• virtual reality software for interactive entertainment and virtual reality gaming

• software for the creation, production, and modification of digital designs and characters, avatars, digital overlays, and skins

Do you need help with your trademark?

How can you check if a brand is trademarked for the Metaverse?

The best way to check whether a brand is trademarked for the Metaverse is to use the USPTO’s trademark registration database via the Trademark Electronic Search System (TESS).

In the BASIC WORD MARK SEARCH function, you can type a brand name and see the products and services for which it has been trademarked. Brands trademarked for products and services such as virtual goods, goods for use in online environments, retail store services featuring virtual goods, and software related to the sale of virtual goods or modifying digital goods.

5 Steps to Protect Your Brand in the Metaverse

1. Register your trademarks: Brand owners are strongly encouraged to register their trademark with the USPTO and foreign equivalents. In the United States, doing so creates a rebuttable presumption that the owner owns the exclusive right to use its trademark in connection with its goods or services and puts the owner in a much better position to enforce against any unauthorized use of its mark in either the virtual world or the real world.

2. Consider subscribing to a trademark watch service: A trademark owner can’t monitor and track every infringing use in the Metaverse. Trademark watch services allow the trademark owner to monitor relevant markets and Internet content for possible infringing activity. Consider designating outside counsel to review these reports as they come in. By working with a watch service, owners can be notified of infringing activity sooner rather than later and can take swift action as these issues arise.

3. Immediately notify platforms and infringers of infringing activity: When infringing activity is detected in the Metaverse, brand owners should report this infringement to the platform. Many of these entities do not want to be liable for any contributory infringement, so they have mechanisms in place to remove infringing content once they become aware of it.

4. Establish a metaverse presence: Finally, brand owners should consider establishing a metaverse presence of their own. Aside from the benefits that come with leveraging the Metaverse as an alternate means of reaching consumers and building brand awareness via a thriving and growing market, it also provides an opportunity to monitor activity, and it may even help thwart trademark infringement by bad-faith actors.

5. Use your trademarks correctly and with the correct trademark symbol: In the Metaverse, users will encounter your brand digitally, much as they do now on a website. Using a trademark symbol conditions customers to recognize your brand names and logos and to start associating them with your business. Read more about trademark symbols here.

PART IV: HOW TO PREPARE FOR THE METAVERSE

In this section, we’ll discuss a strategy that any business can follow to prepare for the Metaverse.

The Metaverse is coming, and it will offer tremendous business opportunities in the near future. The key is to prepare in advance so that you don’t lose your brand in the Metaverse and execute your marketing strategies effectively.

How can you prepare for the Metaverse?

Businesses can prepare for the Metaverse in many of the same ways that they prepare to sell their products and services in a new “real world” market. The Metaverse will be a new virtual market for your products and services. And, like any other new market, businesses need to consider how they present their brand and target their ideal customers.

4 ways a business can prepare for the Metaverse

If your company is developing a digital product or service, or one that can be sold or advertised in the Metaverse, then you need to prepare for the Metaverse. Here are four ways t get ready:

1. Identifying a target customer base for your product

2. Develop a strategy to promote and advertise your brand and products in the multiverse

3. Build a presence in the multiverse by opening a virtual retail shop

4. Ensure that your trademarks are registered for digital and virtual reality products. This is the key to protecting a brand in the Metaverse

TAKE THE NEXT STEP

Take the next step toward LEGALLY owning your brand for the Metaverse!

We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting your trademarks for use in the Metaverse, we invite you to book a FREE brand protection strategy session with us here.

Michael Kondoudis

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).

Archives for January 2022

→ What a trademark lookup is

→ Why a trademark lookup is important

→ When to do a trademark lookup

→ Where to do a trademark lookup

→ How to do a trademark lookup in four steps

→ Do you need the help of a trademark attorney?

III. CONDENSED SUMMARY

What is a Trademark Lookup?

What Does a Trademark Lookup Do?

Why Do a Trademark Lookup?

The Top Five Reasons to Do a Trademark Lookup

1. To find out if your trademark is distinctive

2. To find if your trademark is similar to someone else’s

3. To find if your trademark infringes someone else’s

4. To find who owns a specific trademark

5. To make the registration process go more smoothly

Do You Have to Do a Trademark Lookup?

Why Should You Do a Trademark Lookup?

When Should You Do a Trademark Lookup?

Where Do You Do a Trademark Lookup?

1. The USPTO Trademark Database – TESS

2. State Trademark Databases

3. Google Trademark Search

Where Do You Check Availability of a Trademark?

How to Do a Trademark Lookup – The Four Steps of Every Trademark Lookup

Trademark Lookup Step 1 – A USPTO Trademark Lookup

Trademark Lookup Step 2 – 50 State Trademark Lookups

Trademark Lookup Step 3 – GOOGLE Trademark Search

Trademark Lookup Step 4 – Review the Search Results

Do You Need an Attorney for a Trademark Lookup?

1. How do I look up trademarks for free?

2. Can I see if a name is trademarked?

What is trademarks lookup?

Why do a trademarks lookup?

Why is a trademarks lookup important?

Take the next step toward LEGALLY owning your trademark!

Last Updated on 5 October 2022

If you are interested in learning more about NFT trademarks, we invite you to read our Comprehensive Guide to NFTs and Trademarks.

If you are interested in learning more about trademarks in the Metaverse, read our Comprehensive Guide to Metaverse Trademarks.

NFT Trademark Filings

-BY MONTH–

METAVERSE Trademark Filings

-BY MONTH–

CRYPTO Trademark Filings

-BY MONTH–

Major NFT + Metaverse Trademark Filings

Sports

Celebrities / Pop Culture

Movies / Television

Beauty

Apparel

Publishing

Music

Collectables / Toys

Retail

Food / Beverage / Restaurant

Home Improvement

Travel / Lesiure

List of NFT + Metaverse

Trademark Filings

-updated February 2022-

I. NFT Trademark Filings (by Month) (jump)

II. Metaverse Trademark Filings (by Month) (jump)

III. Major NFT + Metaverse Trademark Filings (by sector) (jump)

IV. List of NFT + Metaverse Trademark Filings (jump)

Ready to take the next step toward LEGALLY owning your NFT, Metaverse, or Crypto Trademarks?

If you want to trademark your restaurant’s name but aren’t sure how to begin, just follow our five steps to restaurant trademark protection.

How Do You Protect a Restaurant Name?

Can you legally protect your restaurant name?

Can you trademark a restaurant name?

How do I protect my restaurant name?

Protecting A Restaurant Name and Logo

What is Restaurant Branding?

What is a Restaurant Trademark?

What is a federal trademark?

Do Restaurants Have Trademarks?

Do Restaurants Need Trademarks?

Schedule a Free Strategy Call

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