Second Life Avatar Gets Trademarked

In September 2007, Alyssa LaRoche was working on obtaining a trademark for her Second Life avatar, Aimee Weber, as a part of her virtual design business. Last week Grossman Tucker Perreault & Pfleger announced that they had successfully prosecuted the application, a process involving responding to Patent and Trademark Office attorneys and submitting arguments to get the trademark registered.

Jennifer L. Fessler, the GTPP associate who prosecuted the mark, notes that as the trademark is for use in a virtual world, unlike marks used on websites to market real-world services, the USPTO decision to grant it is something of a landmark.

Not only does it affirm that trademarks may be recognized for virtual services and enforced in the real world, it opens up more questions and options. It suggests that real-world trademark owners may plead a case of infringement against virtual world trademarks that are too similar, that virtual trademark owners can also seek further protection, and that the trademark use in Second Life is a use in commerce governable by Congress.

"It is not presently clear how the PTO's decision to issue this registration will implicate trademark law or trademark owners," explained Fessler. "However, it is a good indication that Second Life, and activities conducted in Second Life, are uses in commerce of the type that can be regulated by the U.S. government pursuant to the U.S. Constitution."

Comments

[David Crespo]

I think if you look, this is not the first application for a trademark in this category. This is also not the first to be successful.

[Princess Ivory]

Ok, consider this. I have an avatar in Second Life named Princess Ivory. She has existed since January 2007. I file a trademark application for her name. At this time there are no other virtual worlds for me to mention in the application. I am granted the trademark. Is it effective the date she was first registered with Second Life, or with the date of the trademark application approval?

Now, I decide to join some of the OpenSim platform worlds that are coming into existence after Second Life was created.

So, I go to sign up on Openlife as Princess Ivory. Is my trademark for the avatar named Princess Ivory (much like Mattell's trademark on Barbie as an identity) still valid? Meaning, do I have to file a trademark registration for each virtual world that Princess Ivory exists in? Or does the original trademark protect me in all virtual worlds?

And what if someone else already has my Princess Ivory name in Openlife? Does my trademark give me the right to take legal action to reclaim my name? Is it based on date of existence, regardless of virtual world, or is it based on the date I filed the original trademark application?

What happens if you get squatters who go grab the names of well known avatars, and demand large sums of money or other compensation to forfeit them (much like we see people registering and squatting on domain names)? And what about using Princess Ivory as my email address or web domain? Does the trademark cover that?

This is a very sticky question, I think.

[trademarks]

This is the most hilarious trademark-related story I have ever read. Ever! =)

[Latransa Pera]

It's not that hilarious (or mysterious) when you look at the details of the actual trademark grants. There are two _separate_ trademarks:

1. the stylized graphical appearance of Aimee's avatar in cartoon form (the name Aimee Weber appears nowhere on this trademark; it's just a logo). Registration # 3531683

2. the word and logo representation of "Aimee Weber Studio", including the blue butterfly iconography. Registration # 3531682

In both cases, the goods & services so marked are "Computer programming services, namely, content creation for virtual worlds and three dimensional platforms." There's nothing about being in or of Second Life, or any other virtual world -- just a straightforward commercial trademark claim for rather vanilla commercial services.

Sadly, Aimee's avatar logo seems to have been classified as "ANI-INV Invertebrate;animals that are lacking a spinal column, have no backbone or internal skeleton". Which I suppose is strictly true, but... !