When Virtual Goods Became Real Trademark Problems
In December 2021, a digital artist began selling NFTs called "MetaBirkins" — digital images of Hermès Birkin bags covered in colorful fur, sold on OpenSea for tens of thousands of dollars each. Hermès, the French luxury house that makes the physical Birkin bag, had not authorized the project. They sued.
The case — Hermès International v. Mason Rothschild — went to trial in the Southern District of New York in 2023. The jury found for Hermès on trademark infringement, dilution, and cybersquatting claims. Mason Rothschild was ordered to pay $133,000 in damages. The MetaBirkins project was enjoined.
The case established something that lawyers had argued about since NFTs went mainstream: virtual goods that function as brand identifiers in commerce are subject to the same trademark rules as physical goods. The fact that a Birkin is digital doesn't mean Hermès has no trademark rights in the design. The question is the same one that applies to any potential infringement: is this creating confusion among consumers about the source or endorsement of the goods?
How NFTs and Virtual Goods Fit Into Trademark Classes
The USPTO addressed NFT trademarks through examination guidance issued in 2022 and updated since. The key determinations:
Class 9 — Digital Files and NFTs
Downloadable digital files authenticated by NFTs, downloadable virtual goods (clothing, accessories, art), and the NFTs themselves as unique digital tokens fall under Class 9. The specific description matters: "Downloadable digital files authenticated by non-fungible tokens (NFTs)" is an accepted ID Manual description. More specific descriptions cover virtual clothing, virtual footwear, virtual art, etc.
Class 35 — Virtual Marketplaces
Operating a marketplace for NFTs or virtual goods — like an NFT platform, a virtual goods trading platform, or a metaverse commerce service — falls under Class 35 (retail store services, online marketplaces).
Class 41 — Virtual Entertainment and Events
Virtual concerts, metaverse experiences, online gaming environments, and entertainment services in virtual worlds fall under Class 41.
Class 42 — Virtual World Software and Platforms
The software powering metaverse platforms, virtual world services, and online gaming environments falls under Class 42.
Nike — Filed for "downloadable virtual goods, namely, footwear, clothing, headwear" in Class 9. Later acquired RTFKT, a Web3 sneaker brand.
McDonald's — Filed applications covering "operating a virtual restaurant online" and "providing a virtual restaurant in the metaverse" in Classes 35 and 43.
Gucci — Filed across Classes 9, 35, and 41 covering virtual luxury goods, NFT-authenticated items, and virtual fashion experiences.
Adidas — Filed for "downloadable virtual goods, namely, clothing, footwear, headwear, sporting goods" in Class 9, following its "Into the Metaverse" NFT collection.
The First Amendment Defense — and Why It Has Limits
The MetaBirkins case raised a defense that many Web3 creators have relied on: that NFT projects are artistic expression protected by the First Amendment, shielding them from trademark liability. The legal standard comes from Rogers v. Grimaldi (2d Cir. 1989), which held that artistic works using a celebrity's name receive First Amendment protection unless the use is explicitly misleading or has no artistic relevance.
The MetaBirkins jury found that the Rogers defense didn't apply because the project functioned less like art and more like a brand — Rothschild had marketed the MetaBirkins using Instagram, had a website, sold them through OpenSea with commercial intent, and used Hermès' trademark in a way that created confusion about Hermès' involvement or endorsement.
The lesson isn't that artistic NFT projects can never use existing brand imagery. It's that the more a project functions commercially — the more it looks like a brand building on top of someone else's trademark — the weaker the First Amendment defense becomes, and the more it looks like trademark infringement.
For Web3 Builders: What to File
If you're building a brand in the NFT, Web3, or metaverse space, the trademark strategy is the same as any other technology brand — plus some specific classes:
- Your brand name as a word mark — in Classes 9, 35, 41, and 42 as applicable to your business
- Your logo as a design mark — in the same classes
- Any distinctive collection name — if it functions as a brand identifier, register it
- Class 9 description — "downloadable digital files authenticated by non-fungible tokens (NFTs)" covers the core digital goods; add specific virtual goods descriptions if relevant
The specimen requirement for virtual goods is the same as any digital product: a screenshot of the goods being offered for sale or download, with the mark clearly visible and an offer to purchase. An NFT listing page on OpenSea, Foundation, or your own platform showing the mark associated with the digital goods is an acceptable specimen.
The Squatting Problem in Web3
The same squatting dynamics that affect traditional domains and social handles appear in Web3 namespace systems — ENS (Ethereum Name Service) domains (.eth), Unstoppable Domains, and other blockchain-based naming systems. These are not governed by ICANN or the UDRP, and trademark law has limited direct reach into blockchain-native naming systems.
The practical approach: register your brand names in the major decentralized namespace systems if Web3 is relevant to your business, in addition to traditional domains and trademark registration. The cost is low; the risk of not doing it is real as these ecosystems mature.
Frequently Asked Questions
Can I trademark my NFT collection name?
Yes — if it functions as a brand identifier in commerce. The same rules apply as any trademark: the name must be distinctive, not merely descriptive of the NFTs, and used (or intended to be used) in commerce to identify the source of the goods. File in Class 9 for the NFTs as digital goods. If you're running a marketplace or platform, add Class 35. If the collection has entertainment value, add Class 41.
What if someone creates NFTs using my brand's name or logo?
If you have a registered trademark and the NFT project creates a likelihood of confusion about your brand's involvement or endorsement, you have an infringement claim under the Lanham Act. The MetaBirkins case showed that courts will apply traditional trademark analysis to virtual goods. You can also send a cease and desist, file DMCA takedowns for any copyrighted artwork, and report the project to the NFT marketplace platform.
Do I need separate trademark registrations for physical and virtual goods?
If you want protection for both, yes. A trademark covering physical clothing in Class 25 does not automatically extend to virtual clothing in Class 9. The USPTO treats physical and virtual goods as separate goods. This is why brands like Nike and Gucci have filed separate registrations for their virtual goods — their existing physical goods registrations don't cover the digital equivalents.
Are blockchain domain names (.eth, .crypto) protected by trademark law?
Blockchain-native naming systems are not governed by ICANN and are not subject to the UDRP. Traditional trademark law applies if someone uses a blockchain domain to infringe your trademark in commerce (selling infringing goods, impersonating your brand), but the enforcement mechanisms are less developed than for traditional domains. This is an evolving area where the law is still catching up to the technology.