Whether you can file a trademark for an NFT depends on whether the NFT is part of a larger collection or series. If the collection sells specific goods and/or services, it may receive trademark protection. Trademarking an NFT at the United States Patent and Trademark Office (“USPTO”) is the first step in securing your intellectual property (“IP”).
Can NFTs Receive Trademark/IP Protection?
A trademark is a source indicator for specific Goods and/or Services that distinguishes it from that of others. Whether a person can file a trademark for an NFT depends on whether the NFT is part of a “series” or “collection.”
The USPTO only allows expressive works (i.e., music, video, art, writing) that are part of a collection to register because the source is identifiable. If you want to protect your NFT’s IP as an original work of authorship, consider filing for copyright registration. However, if your NFT appears as part of a series, you should considering protecting your IP broadly with a trademark filing.
An Example of a Collection or Series
For example, “Casablanca” is a famous movie title. However, the title is not associated with certain collection that shows the source from which Goods and/or Services emanate. On the other hand, the movie “The Lord of the Rings” and the “Harry Potter” books form part of a series or collection and the source of Goods and/or Services are identifiable.
Put differently, if J.K. Rowling filed for a trademark protection for Harry Potter after the first book’s publication (i.e., only after “Harry Potter and the Sorcerer’s Stone’s” publication) she would receive a trademark Office Action refusal.
There is no such issue after the second book’s publication (i.e., “Harry Potter and the Chamber of Secrets”) since it is part of a series or collection.
The NFT Must Be a Part of a Collection Or Series
Applying this to NFTs, a 1-of-1 NFT is ineligible for trademark registration unless associated with a larger collection or series.
Bored Ape Yacht Club is a great example. Yuga Labs LLC, the company behind Bored Ape Yacht Club, filed a trademark for its NFTs early in the process for its 10,000 Bored Apes. While each bored ape cannot receive trademark protection as a standalone NFT, it can receive trademark protection only when put into a collection or series.
In fact, to date Yuga Labs LLC has filed at least 38 trademarks at the USPTO.
As a side note, Yuga Labs LLC waived copyright claims to Bored Apes for personal and commercial use so long as the owner cryptographically authenticates that her or she owns the NFT. However, they have not done so for their 38 trademarks. As such, this is not the same as “owning Bored Apes NFT’s IP” — a common, but incorrect claim; only Yuga Labs LLC owns the Bored Ape Yacht Club’s IP.
Sections 1, 2, and 45 Refusal – Title of a Single Work
If the NFT is not part of a series it would receive a “Sections 1, 2, and 45 Refusal” also called “Title of a Single Work.” As explained above, trademark applications for a single work of authorship are refused eligibility on the trademark register. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051–1052, 1127; see Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162-63 (Fed. Cir. 2002); TMEP §§904.07(b), 1202.08.
IP Issues With NFT Trademarks
Trademark practitioners should anticipate IP issues involving NFTs to involve ownership, transfer, and assignments. In addition, secondary marketplaces, such as OpenSea are the target of individuals seeking to dupe unwitting individuals into purchasing material that is lifted wholesale and without the owner’s authorization. A small, but significant number of NFTs available on secondary marketplaces involves IP theft. Most NFT filings are in service classes (Class 35-45) with the exception of Class 9 (for non-downloadable videos as a “good”).
How Do You Trademark an NFT?
If your NFT qualifies as part of a collection or series, you can use the name, search for similar names, and file for registration.
1. Select A Name
For word marks, names that are memorable, creative, and unique are strongest. The stronger the trademark, the more likely that the USPTO will grant registration on the higher, the Principal Register. Trademark names vary in strength. The list below shows the different trademark types by strength (strongest to weakest):
- Fanciful – a unique, made-up word (e.g., ROLEX or CLOROX).
- Arbitrary – no connection between a word and the products (e.g., APPLE or BANANA REPUBLIC).
- Suggestive – allows a consumer to create a logical connection between a word’s meaning or connotation with the final product or service (e.g., GREYHOUND or SPIRIT).
- Merely Descriptive – ineligible for registration on the Principal Register, but may receive protection on the Supplemental Register. Directly describes the product/service offered (e.g., SMITH FURNITURE).
- Generic – ineligible for registration (e.g., TEA LOUNGE)
For logos, you should hire a graphic designer or create a logo using software.
2. Conduct a Trademark Search for the NFT
Go to the Trademark Electronic Search System or TESS and conduct a search for the trademark NFT. A direct hit search is not enough, search for alternative misspellings (e.g., GREY vs. GRAY) or intentional misspellings. In addition, a trademark search should include the appropriate International Class of Goods and/or Services.
For instance, there are DELTA trademarks in Class 39 for airline services and Class 11 for faucets. In the above example, there is no conflict because the Class 39 and Class 11 do not overlap as “Coordinated Classes.” However, please remember that the test for conflicts is not an exact match; the test is whether the two marks are “similar” such that they would cause “likelihood of confusion.”
TESS is a great tool in the right hands. However, it is wise for those without enough experience in trademark searches to hire a qualified trademark attorney.
3. File a Trademark for Your NFT Collection
The trademark application appears deceptively simple. However, within the application are legal standards such as “use in commerce,” “intent to use,” “specimens” and other jargon. A mistake in trademark filing may lead to a costly and time-consuming amendment.
While a U.S. licensed trademark attorney is not necessary for U.S. residents, the USPTO recommends hiring a private trademark attorney. This is due in large part to common misunderstandings about trademark law practice. Please note that trademark filing companies (i.e., LegalZoom, and the now defunct Trademark Terminal) are not private attorneys.
The benefits of hiring a trademark attorney:
- Your NFT IP is more likely to receive protection
- You are less likely to receive a Office Action rejection
- The attorney has experience filing many trademark applications before
- Your costs are less long term due to fewer errors
- The attorney can advise you on trademark strategy
For non-U.S. residents or companies, the USPTO requires U.S. Counsel.
4. Observe Your Application’s Progress
Once trademark filing for your NFT is complete, the application will go through a rigorous process before an Examining Attorney at the USPTO. The Examining Attorney will
- Search the database for similar NFT trademarks
- See if there are any procedural or substantive issues with your mark
- Request an appropriate specimen if the applicant did not provide one
This process to get before an Examining Attorney takes around 6 to 8 months. It now takes 12 to 18 months at the USPTO until full registration. Throughout this process, the Examining Attorney may communicate with you via email. Examining Attorneys only communicate by phone or email, not by mail.
5. Registration and Post-Registration Monitoring
You may place the “®” symbol next to a trademark NFT only after receipt of a “Registration Certificate.” Your work, however, is not over. Trademark registration is pointless if it lacks monitoring. Monitoring is the process through which an individual or attorney searches for similar marks on the web or at the USPTO. The monitoring process enhances your exclusive right to display and use your trademark. In addition, you will need to file a declaration during your 5th and 6th year anniversary, and a declaration plus renewal at the 9th and 10th year anniversary.
Conclusion
NFTs are capable of trademark registration. However, the NFT cannot be a singular work because under Sections 1, 2, and 45 of the trademark act, single works are incapable of functioning as a trademark (i.e., a “source indicator”). Instead, if the trademark is part of a collection or series (e.g., Cryptopunks), it may receive trademark protection since it identifies the source from which Goods and/or Services emanate.
If you want to trademark your NFT collection or series, you should contact Syed Law. I created an easy-to-use form to get your NFT trademark started. Our law firm has routinely assists creatives and entrepreneurs file trademarks. In addition, Syed Law is following the evolving NFT trademark space closely and positioning itself to being the go-to firm for NFTs and IP.
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