Insurance has the potential to play a significant role in the metaverse, which is often defined as an immersive environment designed to be an extension or replica of the real world. For example, we can imagine scenarios where consumers seek insurance policies to protect some of the key aspects of these virtual worlds such as personal data, digital assets and digital property — such as Non-Fungible Tokens (NFTs). Or perhaps an insurer offers policies to employers who begin to offer their workplace in a virtual environment and are worried about “virtual harassment” or “virtual discrimination” claims. Insurers could also seek to open virtual shops where insurance for the “real world” is sold to consumers, or even offer a virtual reality platform that allows for consumers to file claims remotely after meeting with a virtual agent in the metaverse. Regardless of whether one thinks insurance will play an important role in the metaverse, the recent filings by this major insurer highlight a more immediate question —do insurers need to file trademark applications to protect their brands in the virtual world?
To help answer this question, you might start by reviewing our blog post summarizing general principles associated with filing trademark applications for goods and services in the metaverse: Considerations for Applying to Register Trademarks in Connection with Virtual Goods and Services ‒ An Overview on Protecting Your Brand in the Metaverse - TCAM Today. Applying those considerations to the insurance space raises similar questions but could lead to a different plan of action than those being implemented by clothing and retail brands. As described in that blog post, goods and services are divided between 45 classes at the U.S. Patent and Trademark Office (USPTO). While insurance and financial services typically fall into trademark Class 36, some insurance services offered in the metaverse may fall into Class 9 or 42 (software services), Class 35 (advertising/business services), or 41 (education and entertainment services). Because of these differences in classification, insurers should consider whether they have traditionally applied for, monitored or enforced their own brands in Classes 9, 35, 41 and 42. If they have, then the need to file new applications is probably less pronounced, because insurers may be able to rely on their existing trademark rights to enforce against third-party “metaverse” applications of concern. But if an insurer has traditionally allowed similar marks in these classes to “co-exist” with its own brands, or has not monitored these classes, we can envision certain scenarios where a factfinder would deem Class 36 insurance services distinct from Class 9 or 42 software services, Class 35 retail services, or Class 41 entertainment services.
Filing metaverse-focused applications in the insurance space may be less critical than in other industries such as fashion, where third parties will likely create counterfeit virtual goods. But proactive insurers may nevertheless decide to file to minimize uncertainty as to whether their existing registrations will be sufficient to prevent the use and registration of similar marks on goods and services formerly considered unrelated in most instances, such as downloadable software or Non-Fungible Tokens (which would fall into trademark Class 9) and insurance consultation or insurance underwriting (which would fall into trademark Class 36). Additionally, applying for registration of marks for virtual goods and services may cost less than opposing “squatters” attempting to register an insurer’s valuable marks. In any event, insurers should consider ramping up their monitoring efforts in connection with virtual goods and services, to avoid third parties capitalizing on their goodwill in the virtual space. And of course, if an insurer does have a bona fide intent to offer its services in the metaverse within the next three years, “intent to use” trademark applications should be considered.
As always, Faegre Drinker attorneys would be happy to analyze these complex questions and provide guidance as to whether applications for virtual goods and services, or other monitoring and enforcement efforts, would be a wise investment for your brands.