NFTs and branding – Does trademark protection need to be considered?

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.

authors: Gudrun Irsa-Klingspiegl and Birgit Hirsch