** This article was drafted by Chris R. Andersen, a Senior Paralegal in NRF’s Dallas Office.  Chris is supervised by attorneys who are licensed in the State of Texas.

Thanks in large part to a Bored Ape the U.S. Trademark Office is trying to help brand owners keep up with the ever-evolving labyrinth of brand protection by including the emerging NFT technology. 

A critical part of any trademark application is the description of goods and services. The descriptions of these goods and services (also known as the identification) are crucial to effective brand protection.

The Trademark ID Manual (found at https://idm-tmng.uspto.gov/id-master-list-public.html) is searchable database of descriptions that the U.S. Trademark Office hold as acceptable for an application and specifies which International Class is correct for the product or service in the application.  It is a “go to” resource for drafting trademark identifications.

The ID Manual has not been known for keeping up with technology trends in its approved identifications but has made an effort to keep up with the popularity of non-fungible tokens (NFTs).

Brands themselves are not typically used directly with the tokens but rather are used on the digital assets which are authenticated by the tokens. The U.S. Trademark Office has identified these goods and services as being “….authenticated by non-fungible tokens (NFTs).” 

Yuga Labs launched the Bored Ape Yacht Club NFTs to great success in April of 2021 and in October 2021 the ID Manual began adding approved descriptions for “non-fungible tokens”.  There are now 12 pre-approved descriptions in the ID Manual for NFTs. 

Two of the new IDs are in Class 35 covering the marketplaces for the collectible assets described as “Provision of an online marketplace for buyers and sellers of downloadable digital {“asset description”} authenticated by non-fungible tokens (NFTs).”

However 10 of the new pre-approved descriptions are in Class 9 covering the collectible assets themselves.  The Class 9 descriptions cover variations of audio, video, image and multimedia files which are described as “downloadable” assets that are “authenticated by non-fungible tokens (NFTs).”

The approach of putting all the actual assets in Class 9 has created a tremendous rush for protection in that class by brand owners. 

Between 2018 and 2020 an average of 700 applications were filed annually that claimed NFTs in their descriptions. This increased to over 3,400 in 2021 with 1,700 of these being after the October 2021 update to the ID manual.  As of September 2022 over 7,000 have been filed since the beginning of the year.  Currently, the USPTO records show over 10,000 pending applications claiming “non-fungible tokens.”

It remains unclear how this will affect the brand owners but it is almost certain that owners who coexisted peacefully before may be forced to battle for protection in Class 9 just as Delta Faucets and Delta Airlines ended up battling over internet protection a few decades ago when that was new technology.