Digital assets, which range from conventional documents and media files to cutting-edge technologies like non-fungible tokens (NFTs), are becoming increasingly vital to business functionality and branding. The importance of understanding and protecting these assets through trademarks is more significant than ever. However, it’s crucial to understand which digital assets are eligible for trademarks and the scope of protection they offer.
[Read more: How to Protect Your IP as a Startup]
What are digital assets?
A digital asset is a digitally recorded and stored property that is searchable, is uniquely identifiable, and holds or offers monetary or abstract value to its owner. Examples include documents and PDFs, audio and video files, photographs, written material, data, and computer programs, among countless others.
This list only continues to grow as businesses implement and use new technologies, such as cryptocurrencies and NFTs, which are considered to be digital assets as well.
What is a trademark?
Trademarks are a form of intellectual property granted by the United States Patent and Trademark Office (USPTO) to federally protect an asset that identifies or distinguishes a business from others. Different from copyright, which protects original works created by humans, a trademark protects a company's unique assets like its name, slogan, or logo from unauthorized registration, misuse, alteration, or reproduction.
A trademark can act as a barrier against imitation businesses that might create a similar online storefront, attempting to deceive customers by using logos and color schemes that closely resemble the original brand's, ensuring that a company's brand identity and intellectual property are secure.
What digital assets can you trademark?
Nearly any brand element can qualify for trademark protection, as long as the trademark is protecting something that uniquely represents and differentiates your business’s services or offerings from competitors. Qualifying digital elements include:
- Names: Businesses can trademark various names to prevent imitations or unauthorized reproduction, including company names, product names, and the names of any affiliated blogs, podcasts, or other media channels.
- Words or phrases: Anything from catchphrases, such as the widely known “That’s Hot” coined by Paris Hilton or Homer Simpson’s “D'oh!” sound, to company slogans like Nike’s “Just Do It” qualifies as trademarkable digital assets.
- Designs: Brands can trademark designs including logos, drawings, labels, and other graphics used to promote products or services. NFTs are also eligible.
- Characters or symbols: If a brand uses a mascot or character to represent itself, such as notable characters like McDonald’s “Ronald McDonald” or Planter’s “Mr. Peanut,” the business can trademark it and protect it from misuse.
- Sounds: Unique sounds like company jingles or other distinctive audio, such as Taco Bell’s “bong” sound or the giggle of the Pillsbury Doughboy, qualify for trademark protection.
- Colors: A color or color scheme is eligible for trademark protection if it serves a "functional" role, either aesthetically or in terms of utility. Some examples of trademarked colors include T-Mobile Magenta, Tiffany Blue, and Wiffle Ball Yellow.
[Read more: How to Trademark Your Invention]
A digital asset is a digitally recorded and stored property that is searchable, is uniquely identifiable, and holds or offers monetary or abstract value to its owner.
Which digital assets do not qualify for trademark protection?
While a wide range of assets can be trademarked, certain ones do not qualify. Typically, this includes broad or more general concepts, such as generic or descriptive phrases or terms that do not signify a brand, as well as creative works that fall under copyright or other protections.
Additionally, any brand asset that could mislead or confuse consumers — such as by sharing too many similarities with another brand’s trademarked assets — would be disqualified from trademark protection, as would common surnames or personal names that do not hold a separate and distinct meaning.
How to trademark your digital assets
While the process of filing a trademark can be a bit complicated, it's a worthwhile investment with long-term protective benefits. Here’s how to do it:
- Begin by conducting a trademark search to confirm the availability of your desired trademark.
- Next, fill out a trademark application, either online or via a paper application, with the USPTO. There, you will need to provide the owner’s contact information and a drawing and a sample of the mark, identify the goods or services associated with your trademark, and select a basis for filing.
- Once you’ve submitted your application, it will undergo a review by a trademark examining attorney who will contact you if they find any problems or if other trademark owners have raised objections to your application.
Registering for a trademark requires a nonrefundable fee between $250 to $750; the price is dependent on the trademark’s class type. The entire process can take anywhere from a few months to years to obtain final approval.
[Read more: How to Register a Business Name: 6 Steps to Get Started]
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