As Demand for NFTs Endures, Saks Fifth Avenue, E.l.f. Are Among the Companies Looking to Trademark Registrations

E.l.f. Cosmetics made headlines this summer when it revealed that it would convert some of its most popular beauty products into non-fungible tokens (“NFTs”) or Ne.l.f.T.s as the beauty brand coined them  and enable fans to own animated representations of their favorite e.l.f. products, including its Golden Poreless Putty Primer Dime, 1600 Hour Golden Camo Concealer, and Golden Ride or Die Lip Balm. Underway behind the scenes of E.l.f.s big NFT reveal, its counsel was working on a crypto-centric project of its own, seeking a trademark registration from the U.S. Patent and Trademark Office (USPTO) for Crypto Cosmetics. 

In the June 16, 2021 application for registration, which has been filed on an intent-to-use basis, counsel for E.l.f. claims that the Oakland, California-based brand is looking to use the Crypto Cosmetics mark in Class 9, and namely, in connection with Digital media, namely, digital collectibles, digital tokens, non-fungible tokens (NFTs) and digital art to represent a collectible item and featuring collectible images, audio, videos, and digital art. 

The 17-year-old beauty brand also asserts intended use in Class 42, including: Providing an online digital asset platform for digital tokens, namely, non-fungible tokens (NFTs), used with blockchain technology for data storage and security, to represent a collectible item and featuring collectible images, audio, videos, and digital art, as well as providing online computer services in the nature of generating and displaying digital tokens, namely, non-fungible tokens (NFTs) to represent a collectible item and featuring collectible images, audio, videos, and digital art. 

E.l.f.s application, which is still pending before the USPTO, is noteworthy, as it is one of the first attempts by a beauty brand to register a mark for use in the burgeoning field of NFTs (i.e.,  unique crypto tokens that are managed on the blockchain), which has captured the interest of consumers and brands in a striking way since the start of the year, in particular, with fashion/luxury companies ranging from Louis Vuitton, Gucci, and Burberry to DKNY, Dolce & Gabbana, and the Karl Lagerfeld brand releasing unique Ethereum-hosted tokens as a way to connect with new consumers. 

Fast forward to September 17 and Saks.com LLC  the independent e-commerce arm of Saks Fifth Avenue, which was split from the main Saks entity this spring filed an application for registration for the word SAKS for use in connection with NFTs. Among the lengthy description of the Class 9 goods/services listed in the retailers application are non-fungible tokens used with blockchain technology to represent a collectible item; non-fungible tokens featuring collectible images and videos; [and] non-fungible tokens featuring digital art; digital tokens used with blockchain technology, as well as digital tokens used with blockchain technology to represent a collectible item. 

In addition to filing an application in the U.S., Saks is also seeking registrations for the same mark for use on NFTs in Canada, Australia, Singapore, the European Union, and New Zealand, with the applications seemly shedding light on an impending move by the Hudson’s Bay Company-owned retailer to engage with consumers across the globe and presumably add addition value to its e-commerce shopping experience by way of NFTs. Although, as of now, it is unclear what exactly what will look like, as Saks has not yet claimed actual use of the mark. 

All the while, RTKFT has been one of the very first-movers in fashion/footwear to make waves when it comes to the multi-billion-dollar NFT market; after all, it sold 621 pairs of Fewocious NFT sneakers in a matter of minutes back in March, netting a cool $3.1 million in sales. It has since collaborated with noted Nike collaborator Jeff Staple for an NFT versions of a sneaker called the Metapigeon Pigeon Dunk SB sneaker, which were offered up in May. 

The 2-year-old company which was valued at just upwards of $33 million in May in conjunction with an Andreessen Horowitz-led funding round has also been at the forefront of the budding pattern of companies starting to file trademark applications for registration in the NFT realm. Since as early as March, the digital fashion brand has been lodging applications with the USPTO for its name (which is pronounced artifact), and word marks like Meta Haze, Krypto Kush, Metamall, Metawear, Cybersneaker, and Metajacket, among others, as well as its logo, which consists of a stylized design of a blade, for use in connection with downloadable virtual goods and virtual goods, namely, non-fungible digital asset tokens used with blockchain technology to represent a collectible item, and in some cases, physical footwear products. 

Interestingly, while the likes of RTFKT, Saks, and E.l.f., as well as the estate of Basquiat and the Andy Warhol and Keith Haring foundations, among others, have been looking to register their marks with the USPTO for use on NFTs, luxurys biggest names have been slower to seek out registrations both in the U.S. and internationally. (That does not mean, however, that they are not amassing trademark rights due to their use of the marks in the NFT space because they are, as rights are earned in the U.S. as a result of use not registration.)

The number of applications in which “digital assets” are listed as goods/services has also been on the rise, albeit, a bit more gradually. WIPO’s database lists almost 750 applications for marks for use in connection with “digital assets.” That is up from 460-something in 2020, roughly 500 in 2019, 710 in 2018, 193 in 2017, 48 in 48, 68 in 2015, and 54 in 2014, at least some of which were filed by Winklevoss IP, LLC for Winklevoss Exchange, WINKEX, AND WINKX. (These three marks are currently inactive in the U.S.)

Given the enduring appeal of NFTs, as well as virtual fashion (such as the accessories that Gucci offered up in collaboration with Roblox earlier this year), and in light of the fact that others such asVirtual Rights Management, which has filed an application for registration for Aria (which also happens to be the name of Guccis first NFT foray) for use on NFTs and NFT marketplaces are aiming to amass registrations in this space, chances are, brands will, in fact, begin to do the same.

As a whole, just upwards of 600 NFT-specific trademark applications for registration have been filed with the USPTO since 2018. On a global scale (which also includes some U.S. applications), the World Intellectual Property Organizations database lists 158 applications for registration for NFTs, with the earliest application being lodged in August 2018 by Ozone Networks for the OPENSEA mark for use in furtherance of the creation of online retail stores for others in the nature of web-based service that allows users to create hosted crypto collectible and blockchain-based non-fungible token stores. The marketplace has since been valued at $1.5 billion.