Brand News: The Mixed (Up) Reality of Brand Protection

Richard Rimer

February 15, 2023

Three simple words: Likelihood of Confusion.

This is the test used to determine whether one brand is infringing the rights of another brand.

Generally speaking, you compare the similarity of the brands and the relatedness of the goods or services sold under those brands.

I first encountered this test 20 years ago, and thought “This will be easy.”  It has gotten harder ever since.  If you think it is easy, you’re missing something.

Two things have made this more difficult over the past 2 decades: Technology and Freedom of Expression.  Today’s post focuses on #technology, and specifically mixed reality.

The legal world is struggling.  Are goods sold in the real world necessarily related to those goods sold in the meta world?  Most lawyers think “Of course they are,” but those same lawyers advise their clients to file #trademark applications covering the meta world– just in case.  I am one of those lawyers.

A recent decision helps resolve this issue.  Hermes sued an artist who sold NFTs in the meta world that looked like Birkin bags.  MetaBirkins. Hermes does not sell virtual Birkin bags, nor have they sought registration for this right.  They felt that their registered rights in the real-world Birkin bags gave them sufficient rights in the meta world.

Hermes was right.  They won.  While this decision is not binding precedent for all future suits, it certainly helps clarify whether goods in the real word are related to those in mixed reality.

Another win for brand rights!  Now excuse me as I file more applications to register my clients’ goods in the meta world.