Increasing number of trademark applications for use in metaverse and tips for overcoming JPO objections
Takako OKADA

Recently both domestic and international applicants are proactively filing trademark applications in relation to the goods and services for use in metaverse. When conducting a search by using multiple keywords such as “NFT”, “non-fungible”, “metaverse” or “virtual space” in the list of goods or services, we can find a clear trend of increase in the number of trademark applications as follows.

74 applications filed in Japan in 2019

79 applications filed in Japan in 2020

328 applications filed in Japan in 2021

806 applications filed in Japan in 2022

In reviewing the trademark applications filed in 2021 and 2022, the international classes that are frequently designated therein are follows.

Class 9                 79% applications designate this class

Class 35               64%

Class 41               61%

Class 42               58%

Class 36               44%

Class 38               24%

Class 16               20%

Class 45               15%

The acceptable descriptions for goods/services in the metaverse field are gradually being clarified through practice in Japan, but there is no JPO guideline or standard providing guidance on such descriptions yet, and a Notice of Ground of Refusal due to indefinite descriptions is issued very often. In such case, it is often helpful to contact the Examiner through a local representative in Japan to explain the nature of the intended goods and services and discuss with the Examiner to develop a list of goods and services which is acceptable for both the applicant and the Examiner. Such solution is one of the suggested options for international applicants facing a possible refusal in Japan.