Disclaimer: These summaries are provided for educational purposes only by Nelson Rosario and Stephen Palley. They are not legal advice. These are our opinions only, aren’t authorized by any past, present or future client or employer. Also we might change our minds. We contain multitudes.
As always, Rosario summaries are “NMR” and Palley summaries are “SDP". Their guest poster Steven Middlebrook can be found on twitter at @stmdc
[related id=1]Re: Abandoned Trademark Application serial no. 85353491 for the word “Bitcoin” [NMR]
From time to time we take a trip down memory lane at the Crypto Caselaw Minute. The past can’t tell you where you’re going, but it can tell you where you’ve been. Recently, there has been some debate on CryptoTwitter™ concerning Twitter handles related to Bitcoin and whether Bitcoin is a brand or not. It was only a matter of time before the broader community began to realize intellectual property issues are worth their attention, but issues related to branding and trademarks are not new in this space. In fact, way back in 2011 someone attempted to trademark “Bitcoin” in the USA. Ultimately, that attempt was abandoned, but it is a useful story to revisit.
On June 22, 2011, a new trademark application was filed with US Patent & Trademark Office by a company called Magellan Capital. That application was for a standard work mark, “Bitcoin,” covering a service offered in the financial services industry. Wait, timeout. Let’s take a step back and go over a couple concepts in trademark law, and then we’ll return to this ultimately doomed filing.
Generally speaking, a trademark is something that indicates the source of goods, or services, and distinguishes those goods, or services, from others. This can be the name of a business, a slogan for a product, and some other things. Trademarks may be registered with national intellectual property offices, and subsequently filed in other countries where the business operates. When filing for a trademark an applicant needs to indicate the class of goods and/or services that they are applying for protection in. What does this mean for the Bitcoin trademark application discussed herein?
When Magellan Capital filed their trademark application they were attempting to trademark the word “Bitcoin” in the class of “[f]inancial services, namely, providing a virtual currency for use by members of an on-line community via a global computer network.” (emphasis added). Practically speaking, that means that Magellan, if they had been successful, would have had the trademark on essentially any use of the Bitcoin network, since Bitcoin is essentially a virtual currency used by members of an online community via a global network. Thinking about the current cryptocurrency space, who provides this virtual currency? Wallets, exchanges, miners, and so on. You can see why this would be a big deal.
What happened? Well, Magellan abandoned their trademark application. Why would they do that? This should come as no surprise, but there was a public outcry when the Bitcoin community found out about the trademark application. Presumably, those at Magellan decided that it was not worth continuing to pursue the mark, so they filed an express abandonment with the USPTO, and that was that.
One of the promises of crypto is that it is Leaderless™ and Decentralized™. That’s not strictly true, and those concepts are more properly thought of as existing on a spectrum. What is undeniable, is that there are vocal communities that can wield tremendous influence over the “brand” that surrounds these coins. That was true in 2011, and it is still true to this day.
The Block is pleased to bring you expert cryptocurrency legal analysis courtesy of Stephen Palley (@stephendpalley) and Nelson M. Rosario (@nelsonmrosario). They summarize three cryptocurrency-related cases on a weekly basis and have given The Block permission to republish their commentary and analysis in full. Part II of this week's analysis, Crypto Caselaw Minute, is above.
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