Fidelity & HSBC Among Large Financial Institutions Filing Trademark Applications with the USPTO for Various Goods and Services in the Metaverse
Fidelity and HSBC are among a growing number of large financial institutions to file trademark applications with the USPTO for various goods and services in the metaverse. Fidelity and HSBC filed several applications in late 2022.
For example, FMR LLC (i.e., Fidelity) filed U.S. Trademark Application Serial No. 97727409 for the mark FIDELITY. The application identifies the following services: SEE FOOTER BELOW
Blockworks reported on December 27, 2022 that “USPTO has previously refused trademark applications with a metaverse focus as they may have been too similar to ones that were previously registered.” I want to expand on this point. Some readers might think that the USPTO is categorically rejecting applications that identify goods or services in the metaverse. That is not the case. However, it is certainly possible—and hopeful for large brand owners—that their existing trademark portfolios (which consist of federal registrations for non-metaverse goods and services) are being cited against third-parties with confusingly similar marks identifying confusingly similar goods/services.
Brand owners should consider filing applications that identify goods/services in the metaverse: (1) to fend off squatters that might get passed a trademark examiner; and (2) protect their marks with respect to goods and services not already offered.
The emerging issues surrounding trademarks and the metaverse is not lost on the USPTO and other IP organizations. I have visited with several USPTO leaders over the last year, and in almost all instances, the metaverse is identified as a key issue. INTA and WIPO are equally interested in trademarks and the metaverse.
As was the case during the early years of the Internet, the metaverse presents new issues and challenges. A proactive approach will likely prove to be the smart approach.
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International Class 9: Digital media, namely, non-fungible tokens (NFT's) featuring textual and graphic content
International Class 35: Providing business information to financial service providers by means of an internet web site, in the field of business marketing in the metaverse and other virtual worlds; referral services in the field of investment advice and financial planning in the metaverse and other virtual worlds; personnel placement and recruiting services in the metaverse and other virtual worlds; consulting services in the field of marketing financial services in the metaverse and other virtual worlds; marketing services rendered to members of the financial services industry, namely, creating and designing promotional materials for use by financial service providers and assisting financial service providers to develop their own marketing plans, and to implement their own direct mail campaigns, advertising campaigns and public relations campaigns in the metaverse and other virtual worlds; promoting public awareness of the need for investment planning in the metaverse and other virtual worlds; provision of an online marketplace for buyers and sellers of digital media, namely, non-fungible tokens (NFT's) featuring textual and graphic content
International Class 36: Mutual fund investment services in the metaverse and other virtual worlds; retirement fund investment services in the metaverse and other virtual worlds; investment management services in the metaverse and other virtual worlds; financial planning in the metaverse and other virtual worlds; securities brokerage services in the metaverse and other virtual worlds; money management in the metaverse and other virtual worlds; financial analysis in the metaverse and other virtual worlds; investment management in the field of private placement of securities in the metaverse and other virtual worlds; investment management in the field of initial public offerings in the metaverse and other virtual worlds; providing financial information in the metaverse and other virtual worlds; research in the field of investments and finance in the metaverse and other virtual worlds; providing retirement plan sponsors with financial news and information, information about retirement planning, investment account information, and information about mutual fund performance in the metaverse and other virtual worlds; donor advised investment of funds for charitable purposes in the metaverse and other virtual worlds; charitable fund raising services in the metaverse and other virtual worlds; automated securities trade execution services in the metaverse and other virtual worlds; retirement fund investment services in the metaverse and other virtual worlds; providing financial information in the field of retirement planning in the metaverse and other virtual worlds; retirement plan administration services in the metaverse and other virtual worlds; financial administration and investment management services rendered to non-profit organizations in the metaverse and other virtual worlds ; financial services rendered primarily to states, municipalities and tax exempt organizations, namely, providing financial news and information and investment account information in the metaverse and other virtual worlds; life insurance and annuity underwriting services in the metaverse and other virtual worlds; consulting services in the field of insurance in the metaverse and other virtual worlds; risk management services in the metaverse and other virtual worlds; insurance brokerage services in the metaverse and other virtual worlds; administration of stock option plans, employer stock purchase plans and directed share programs for others in the metaverse and other virtual worlds; providing financial information about employee stock option plans to participants and potential participants in such plans in the metaverse and other virtual worlds; securities brokerage services provided to holders of stock options in the metaverse and other virtual worlds; administration of employee benefit plans, defined benefit plans, defined contribution plans and employee pension plans in the metaverse and other virtual worlds; consulting services rendered to employers with respect to the design and administration of employee benefit plans in the metaverse and other virtual worlds; financial and actuarial consulting services in the metaverse and other virtual worlds; financial services, namely, agency services in the field of securities in the metaverse and other virtual worlds; financial market information services, namely, compiling and providing information regarding securities in the metaverse and other virtual worlds; electronic bill payment in the metaverse and other virtual worlds; financial administration of credit card accounts in the metaverse and other virtual worlds; fund transfer services in the metaverse and other virtual worlds; financial services, namely, compiling, organizing, managing and reporting user specific financial information in the field of investment accounts, bank accounts, credit card accounts, frequent flyer award accounts and other personal financial data in the metaverse and other virtual worlds; dissemination of financial information relating to the transition from work to retirement or from one job to another in the metaverse and other virtual worlds; providing information about securities prices in the metaverse and other virtual worlds; automated mutual fund clearinghouse services and mutual fund custody services in the metaverse and other virtual worlds; loan financing in the metaverse and other virtual worlds; real estate management services in the metaverse and other virtual worlds; real estate investment services in the metaverse and other virtual worlds; providing financial information of general interest to investors in the metaverse and other virtual worlds; digital currency services, namely, currency trading of cryptocurrencies; digital currency wallet and storage services; e-wallet services, namely, secure placement, management and trading of cryptocurrency assets; electronic wallet services in the nature of electronic storage and processing of virtual currency for electronic payments and transactions via a global computer network; digital currency services, namely, currency trading of cryptocurrencies; digital currency wallet and storage services; e-wallet services, namely, secure placement, management and trading of cryptocurrency assets; electronic wallet services in the nature of electronic storage and processing of virtual currency for electronic payments and transactions via a global computer network; digital currency, virtual currency, cryptocurrency digital token, crypto token and utility token trading services, namely, electronic transfer of virtual currencies; digital currency, virtual currency, cryptocurrency, digital token, crypto token and utility token processing services for others; cash management, namely, facilitating transfers of electronic cash equivalents; management of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; financial services, namely, providing a financial exchange for the trading of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; cryptocurrency trading services; cryptocurrency exchange services; cryptocurrency payment processing; financial consultation in the field of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens
International Class 41: Educational services, namely, conducting classes, workshops, seminars and conferences in the field of investments and in the field of marketing financial services in the metaverse and other virtual worlds; workshops in the field of investments and financial planning in the metaverse and other virtual worlds; newsletters in the field of investments, finance and related subjects in the metaverse and other virtual worlds; providing information in the field of financial education to financial service providers in the metaverse and other virtual worlds
