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