Timely Trademarks Are Important to Crypto: Dogecoin Disputes Illustrate Potential Naming Issues

A current dispute over trademark possession to the identify 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 software with the USPTO this previous August.

Presently, there are at the very least 100 different cryptocurrencies—not related to the unique Dogecoin or Dogecoin Basis—that make the most of the Dogecoin identify. Including to the potential confusion, a Cook dinner Islands-based firm, Moon Rabbit AngoZaibatsu, additionally unaffiliated with the Colorado-based Dogecoin Basis, lately utilized for a trademark for Dogecoin earlier this 12 months. And Moon Rabbit AngoZaibatsu’s founder created his personal Cook dinner Islands “Dogecoin Foundation” primarily based on a acknowledged perception that the Colorado-based Dogecoin Basis was deserted.[1]

Now the unique Colorado-based Dogecoin Basis is trying to assert its rights to the Dogecoin identify. The corporate mentioned that the Cook dinner Islands Dogecoin is looking for to unfairly revenue off the goodwill Dogecoin constructed, and in August despatched a requirement letter to one more undertaking, referred to as Dogecoin 2.0, requesting the undertaking change its identify.

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 undertaking and creating and naming a cryptocurrency. Procuring trademark rights to cryptocurrencies isn’t as simple as acquiring a trademark for a enterprise identify, or a generic good or service.

A trademark is a phrase, identify, image, design, or phrase used to determine and distinguish a services or products and to point out 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 perform is merely as a medium of change, equivalent to a conventional foreign money. Nevertheless, a great or service related to a perform may allow a cryptocurrency identify to be trademarked. Examples of products and companies descriptions contained in registered emblems related to cryptocurrencies are instructive:

  • “Providing on-line non-downloadable computer software for use as a cryptocurrency wallet” (Class 42, for “Turtlecoin” reg. no. 5846770);

  • “Software as a service (SAAS) services featuring software for independent and integrative use of Cryptocurrency.” (Class 42, for “Safecoin,” reg. no. 4822808); and,

  • “Design, development, and implementation of software for cryptocurrency, utility token, digital asset; Providing on-line non-downloadable computer software for use as a cryptocurrency wallet; Technological consulting in the field of cryptocurrency.” (Class 42, for “faithcoin,” reg. no. 5701812).

Candidates ought to thus take into account specific items and companies 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 determine a supply of the products or companies 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 a substitute merely associates Dogecoin with the cryptocurrency itself. The USPTO already discovered the time period “Bitcoin” generic and merely descriptive of products and companies relating to on-line funds.[2] This concern could also be much less of a difficulty for candidates whose cryptocurrency has not achieved the acclaim and notoriety of Bitcoin or Dogecoin, however it can be crucial to keep away from utilizing a cryptocurrency identify in a generic method to stop the identify from falling into the general public area.

Total, whereas there are particular necessities to get hold of a US trademark, the sooner a cryptocurrency firm considers and begins that course of, the higher. (In any other case, it might not be doable to cease others from utilizing the identify 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).

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