The metaverse is spawning a raft of new trade mark applications as companies seek to protect their activities against virtual land grabs, writes Gerard Kelly, Head of Intellectual Property at Mason Hayes & Curran LLP

The world’s largest fast-food restaurant chain, McDonald’s, recently filed 10 trade mark applications with the US Patent and Trade Mark Office, and three trade mark applications with the European Union Intellectual Property Office, for the McDonald’s brand and McCafé trade marks which are seeking to protect "virtual food and beverage products".

These registrations will protect the idea of a McDonald’s restaurant in the metaverse that can sell both virtual and real-world fast food. McDonald’s is just one of a number of high-profile companies in the food and beverage sector to recently take this step, and others are expected to follow suit.

The ‘metaverse’ is an online world in which users’ avatars meet, interact and explore a fast-growing network of virtual locations. This online world has recently generated significant investment from many other high-profile companies. For example, in February 2022 Panera Bread filed a US trade mark application with intention to build out virtual restaurants. The Paneraverse mark seeks protection for non-fungible tokens (NFTs) to facilitate commercial transactions of virtual food and beverages.

DIGITAL REAL ESTATE

The metaverse is mostly used for gaming and socialising. However, it is increasingly being used for work meetings also. ‘Land’ in the metaverse is a digital real estate asset that companies or individuals can buy, and then populate with games or other assets. The ‘plots’ are bought as NFTs, the ownership of which is recorded on a blockchain. Nike has recently established a Metaverse Studio and has filed patent applications for its virtual assets. Facebook/Meta has launched its own metaverse world, Horizon Worlds, and Microsoft also has announced plans to launch a metaverse version of its Teams app.

In Association with

The McDonald’s trade mark applications in the EU for the McDonald’s, McCafé and its famous golden arches logo also seek to protect ‘downloadable multimedia files containing artwork, text, audio and video files and non-fungible tokens’. They also cover ‘online retail services featuring virtual goods’, and ‘operating a virtual restaurant featuring actual and virtual goods, operating a virtual restaurant online featuring home delivery’.

The use of these marks will involve the idea of a metaverse user walking into a McDonald’s restaurant, via an avatar and placing an order. A short while later and in addition to the virtual goods being delivered, the real-life McDonald’s order is delivered to the user’s home. The EU applications are also seeking to protect other brand offshoots, including "entertainment services namely, providing on-line actual and virtual concerts and other virtual events".

These filings McDonald’s filings represent a novel move from a trade mark perspective. However, it is arguable that the filings are not entirely necessary. For example, the McDonald’s portfolio of trade marks would likely be robust enough to prevent anyone from opening a McDonald’s restaurant in the metaverse or copycatting the brand, particularly if there is a real-world delivery involved.

BRAND PROTECTION

Nevertheless, the filings will ensure that the legal protection is clear, and that McDonald’s will have all the tools necessary to enforce their trade marks against potential infringers, including in the virtual world. The filings are drafted sufficiently broadly to cover any virtual food and beverage products on any platform, and not solely the metaverse.

Given the increasing demand for innovative technologies, from a brand protection perspective at least these filings represent a prudent enforcement strategy. Whilst the US filings are expected to take approx. eight months to reach registration, the EU filings can be expected to proceed to registration within the next three to six months.

+ Gerard Kelly is Head of Intellectual Property at Mason Hayes & Curran LLP. For more information, visit MHC.ie