Advertising Law Blog

The United States Patent and Trademark Office (“USPTO”) is constantly adapting to the changing world, which now includes the virtual world, and more and more trademark applicants are seeking to obtain trademark protection for virtual goods and services. As a reminder, the USPTO has adopted an international system of classifying goods and services in trademark applications, with 45 different categories. There is some confusion about how virtual goods and services are classified.  

For services, it is important to note that the means by which a service is rendered does not determine the classification. Instead, it is the end result of the services that determines the proper USPTO class of services. If the end result is an actual service, it is classified according to the standard classification for that service, but if it is a virtual result, then it is likely classified as an entertainment service. For example, if a bank offers customers online virtual banking, and the customer can perform actual bank transactions, the service would fall within Class 36 as “banking services.” However, if a bank offers simulated banking in virtual environments (such as in a computer game), this service would fall into Class 41 as it would be an entertainment service.  Similarly, virtual interior design services that displayed a room in different paint colors would either fall within Class 41 if the room being designed is a virtual room (as entertainment) or Class 42 if the virtual design service creates an actual room  (as interior design services).

For goods, the same analysis applies. Actual cosmetics, even if sold online, would fall into Class 3 for the goods themselves. On the other hand, providing virtual cosmetics that can be used with an avatar, for example, would fall within Class 41 as entertainment services.  

Descriptions of goods for simulations must include the nature of the activity that is being simulated and state that the services are rendered or the goods are provided in a virtual world for entertainment services, if accurate. 

Takeaway: It is possible to obtain trademark protection for many kinds of virtual goods and services, but it is not always clear how they should be classified. It is therefore important to properly describe the goods and services in a trademark application so that they may be properly classified.