Melissa M. Dunn 
TFL EXCLUSIVE – The Metaverse may have a striking new occupant if a handful of recently filed trademark applications are any indication. A number of new filings with the U.S. Patent and Trademark Office seem to indicate that Privé Porter is quietly preparing to enter the metaverse and may be bringing its collection of hard-to-get luxury handbags and watches with it in what could prove to be a controversial effort to meet deep-pocketed – and crypto-happy – luxury consumers where they are, and beat brands, other retailers and even some of the biggest players in the world of bidding in the virtual goods space in the process.
After making a name for itself connecting luxury collectors with Hermès’ coveted handbags (i.e. Birkin and Kelly bags over $12,000) and hard-to-find watches acquire, such as the Rolex Daytonas, for which Privé Porter customers willingly pay a markup in order to avoid the hoops these brands put consumers through in order to get their most anticipated deals, Privé Porter seems to aim to be a forerunner when it comes to offering luxury products in the booming virtual world.
Two trademark applications, which were filed by Miami-based Privé Porter’s attorney on March 11, cite uses of the Privé Porter name and its stylized key logo, respectively, on “files of downloadable images containing and serving as the title of designer handbags and designer watches authenticated by non-fungible tokens” (Class 9); and “online retail store services featuring virtual goods, namely handbags designer handbags and designer watches for use in online virtual worlds”, as well as “providing an online marketplace for buyers, sellers and the auction of downloadable digital designer handbags and watches authenticated by non-fungible tokens” (class 35).
The language of intent-to-use applications indicates that Privé Porter seeks to offer non-fungible tokens (“NFTs”) that are linked to – and serve as a title for – tangible luxury goods, namely, “purses hand and designer watches”. and this is also accompanied by images of these tangible luxury goods. Beyond those uses, the apps suggest that Privé Porter also plans to offer “downloadable digital designer handbags and watches” through an online marketplace (as is the usual method of acquiring NFTs), as well as through auctions.
If Privé Porter were to introduce an experiment in which he auctioned off his coveted assets in the metaverse (i.e. on a metaverse platform), it would be an ambitious move that could potentially pit him against titans of the auctions like Christie’s and Sotheby’s, which have readily embraced the digital asset market, but haven’t really brought a like-for-like equivalent of their “real” world auction business to the metaverse. (It should be noted that while Sotheby’s launched a replica of its London headquarters on the Ethereum-hosted virtual reality platform Decentraland last year, the virtual outpost acts exclusively as a gallery and not an auction house. If Privé Porter were to spearhead a metaverse-specific auction experience, it also wouldn’t be the first time it’s gotten a leg up in the luxury space thanks to a fledgling platform; Privé Porter built his business using Instagram as his retail platform in 2013 and has since done about $120 million in business without an e-commerce site.)
Two other intent-to-use applications that were filed on March 14 provide further insight into Privé Porter’s efforts, indicating that the company plans to use the designs of a handbag and a watch in connection with “downloadable virtual goods, namely computer programs containing watches intended for use in online virtual worlds” in Class 9.
Interestingly, the two brands of virtual products do not consist of the design of a Birkin bag, a Daytona watch or any other famous handbag or watch. Instead, they come in the form of a sleek purse and watch, both branded with a single logo: the Privé Porter key. The handbag mark consists of “a three-dimensional trapezium with two oval half-lines with a partially full rectangle in the center and mirrored vertical bars below the rectangle”, while the watch mark is described as a “three-dimensional tridecagon bracelet with a smaller tridecagon at the top and a partially full rectangle in the center and mirrored vertical bars below the rectangle.
Reading between the lines suggests this could be an attempt by Privé Porter to come full circle and offer digital assets that buyers of its physical goods, including real Birkin bags and Rolex watches, can view in the metaverse. without landing Privé Porter on the recipient of trademark infringement of such marks. After all, the potential for real-world litigation centered on virtual goods is not a mere guess. Control-conscious brands have proven contentious when it comes to the unauthorized distribution of their offerings – both in the “real” world (the persistence Chanel against the real real case comes to mind) and in the virtual. Although Hermes hasn’t made any moves in the Metaverse (yet), it is in the midst of a trademark infringement and dilution case, which it has filed against the Birkin-like NFT creator called MetaBirkins.
Meanwhile, Nike sued StockX on Feb. 3 for trademark infringement and dilution, and unfair competition, in connection with the retailer’s offer of NFTs related to images and physical versions of Nike shoes, with ” inflated prices” and “obscure conditions of purchase and ownership”.
On the other hand, Privé Porter’s decision to file registration applications for a virtual bag and watch bearing its own logo could very well mean that it is looking to go beyond – or complement – the offerings of others. with its own collection of PrivéPorter luxury goods and virtual look-alikes or “digital twins” of these tangible goods for consumers to show off in the virtual world, such as in Decentraland or other metaverse platforms. That would, of course, be notable because as of now, while handbags from brands like Gucci have infiltrated Roblox, for example, handbags and watches aren’t available on Decentraland.
It’s too early to tell what the specific outcome will be, but regardless, a move by Privé Porter to introduce ultra-luxury offerings into the metaverse makes sense, as it wouldn’t be surprising if a fair share of its existing customers fall into the camp of individuals amassing fortunes in the crypto space and looking to acquire virtual assets to offload some of their Ether-based revenue.
