Trademark Issues in the Cryptocurrency Industry

A current dispute over trademark possession to the title of meme-fueled Dogecoin highlights the significance of trademark rights within the ever-growing world of cryptocurrencies.

Initially created in 2013 by two engineers as a joke, Dogecoin has since meteorically risen in recognition and worth, having obtained a market capitalization as excessive as $80 billion earlier this 12 months.

The 2013 founders didn’t apply for a trademark for Dogecoin till 2021, when the founders’ Colorado-based non-profit, the Dogecoin Basis, filed an utility with the USPTO this previous August.

At present, there are no less than 100 different cryptocurrencies—not related to the unique Dogecoin or Dogecoin Basis—that make the most of the Dogecoin title. Including to the potential confusion, a Prepare dinner Islands-based firm, Moon Rabbit AngoZaibatsu, additionally unaffiliated with the Colorado-based Dogecoin Basis, just lately utilized for a trademark for Dogecoin earlier this 12 months. And Moon Rabbit AngoZaibatsu’s founder created his personal Prepare dinner Islands “Dogecoin Basis” based mostly on a acknowledged perception that the Colorado-based Dogecoin Basis was deserted.^[1]

Now the unique Colorado-based Dogecoin Basis is trying to claim its rights to the Dogecoin title. The corporate stated that the Prepare dinner Islands Dogecoin is in search of to unfairly revenue off the goodwill Dogecoin constructed, and in August despatched a requirement letter to yet one more mission, known as Dogecoin 2.0, requesting the mission change its title.

These disputes will take time to resolve, and spotlight the ramifications of not working to safe mental property (right here, trademark) rights on the outset, i.e., when kicking off a mission and creating and naming a cryptocurrency. Procuring trademark rights to cryptocurrencies isn’t as simple as acquiring a trademark for a enterprise title, or a generic good or service.

A trademark is a phrase, title, image, design, or phrase used to establish and distinguish a services or products and to point the supply of the services or products. The necessities can pose challenges when trying to trademark a cryptocurrency.

A cryptocurrency could not qualify as a services or products if its sole operate is merely as a medium of change, akin to a standard forex. Nonetheless, or service related to a operate may allow a cryptocurrency title to be trademarked. Examples of products and providers descriptions contained in registered emblems related to cryptocurrencies are instructive:

• “Offering on-line non-downloadable laptop software program to be used as a cryptocurrency pockets” (Class 42, for “Turtlecoin” reg. no. 5846770);

• “Software program as a service (SAAS) providers that includes software program for impartial and integrative use of Cryptocurrency.” (Class 42, for “Safecoin,” reg. no. 4822808); and,

• “Design, growth, and implementation of software program for cryptocurrency, utility token, digital asset; Offering on-line non-downloadable laptop software program to be used as a cryptocurrency pockets; Technological consulting within the discipline of cryptocurrency.” (Class 42, for “faithcoin,” reg. no. 5701812).

Candidates ought to thus contemplate specific items and providers related to a cryptocurrency when making use of for a trademark.

One other problem of registering a trademark for a cryptocurrency is that the mark should establish a supply of the products or providers related to the mark. The USPTO may refuse to register Dogecoin on this foundation if, for instance, it finds that the general public doesn’t affiliate Dogecoin with the Colorado-based (or Cooks Islands-based) Dogecoin Basis, however as an alternative merely associates Dogecoin with the cryptocurrency itself. The USPTO already discovered the time period “Bitcoin” generic and merely descriptive of products and providers referring to on-line funds.^[2] This concern could also be much less of a problem for candidates whose cryptocurrency has not achieved the acclaim and notoriety of Bitcoin or Dogecoin, however it is very important keep away from utilizing a cryptocurrency title in a generic method to stop the title from falling into the general public area.

General, whereas there are particular necessities to acquire a US trademark, the sooner a cryptocurrency firm considers and begins that course of, the higher. (In any other case, it is probably not attainable to cease others from utilizing the title in a complicated method, and even from buying their very own rights.)

FOOTNOTES

^[1] See, e.g., Wall Street Journal.

^[2] See e.g., Workplace Motion, Appl. Ser. No. 88057882 (Nov. 27, 2018).