Genericide: Trademarking “Blockchain”

Returning to the trademark implications of “cryptocurrency,” we need to consider how it is used in the industry and colloquially. Similar to the term blockchain, when cryptocurrency is used to refer to a specific project, it is not “Cryptocurrency [Project],” rather, it is “[Project] Cryptocurrency.”

Additionally, cryptocurrency has itself become part of the common vernacular and the defining term for this asset class.

For example, Forbes magazine has a website dedicated to cryptocurrencies called “Forbes Cryptomarkets,” and has a specific subsection for cryptocurrencies on its main website under “Crypto & Blockchain” [16][17].

Trademark examiners are also catching on to how “cryptocurrency” is used in the industry and greater society.

Similar to “blockchain,” trademark examiners are keenly aware of how “cryptocurrency” is used in the industry and in greater society.

For example, in a recent refusal action for the mark “Cryptocurrencies Never Sleep,” the USPTO refused the mark for genericness because the phrase is commonly used in the industry to refer to the 24/7 or non-stop nature of cryptocurrency markets [18].

In another refusal action, the mark “Virtual Cryptocurrency ATM” was deemed to be merely descriptive in relation to the Class 36 services because the mark was merely describing the services offered [19]. Descriptiveness described below:

  • “virtual” described the nature of the currency,
  • “cryptocurrency” described cryptocurrency services and transfer of cryptocurrencies,
  • “ATM” described a machine that dispenses virtual currencies such as cryptocurrencies [19].

Generic Problems for Trademark Examiners

The main issue for trademark examiners is understanding when an applicant who wants to register a blockchain-related mark is registering a generic or merely descriptive mark as it relates to the class of goods and services sought.

Trademark examiners at the USPTO are not privy into the affairs and culture of the blockchain, and thus are unlikely to know when a crazy weird term is actually generic

Given that trademark examiners are not privy into the community’s affairs, it is up to the community itself to police trademark registration of generic marks, and to notify the USPTO at least within 30 days of the trademark application’s publication for opposition (“opposition period”) that the mark is generic.

Recommendations

To minimize the disruptive effect of trademarking generic terms, we recommend that blockchain communities take the following non-exhaustive courses of action:

  • Keep your Wikipedia page as up-to-date as possible;
  • Monitor new trademark applications based on community terms;
  • Ask community members to refrain from trademarking community terms without the community’s permission;
  • Trademark your community terms yourself and then provide a brand guide to community members; and
  • Adding community terms to a publicly available dictionary, similar to Decryptionary, a blockchain industry dictionary [19].

Authors

Ledgerback

Ledgerback is a Cooperative network for blockchain and decentralization research, advocacy, and consultancy.

As a Cooperative, we are a community-driven organization owned, managed, and operating for the mutual benefit of our members (a/k/a Scouts). However, we have also recognized the importance of not only supporting our Scouts, but the greater need to identify, collaborate, and solve issues affecting blockchain and decentralized communities.

If you are passionate about about our interests or works, we implore you to contact us at [email protected] so we can work together on spotting and resolving issues in this new digital frontier.

Charles Adjovu

charles adjovu is an Intellectual Property, Privacy and Technology attorney (currently inactive) based in Las Vegas, Nevada. He is passionate about the potential of blockchain to decentralize our current frameworks (i.e., blockchain use-cases), and develop new communities centered around coded principles and truths.

Currently, charles adjovu spends most of his time as a Scout (i.e., a Member) and Researcher at Ledgerback, helping grow the Cooperative into a prominent network for blockchain and decentralization research, advocacy, and consultancy.

Alex Robertson

Alex R is an Intellectual Property and Technology attorney based in Los Angeles, California. He has worked with a broad range of startups and entrepreneurs, helping people with imaginations protect and profit from their innovative ideas. Specializing in emerging fields such as blockchain technologies, AI, and virtual reality, Alex has helped clients navigate regulatory compliance, assert their intellectual property rights, and strategize the building of businesses.

If you would like to get in contact with Alex or learn more please feel free to reach out at [email protected] or visit AlexRobertsonESQ.com for more information.

References

[1] TMEP 1209.01(c)(i).

[2] Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 US 189, 194 (1985).

[3] Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F. 2d 4, 9 (2d. 1976).

[4] Elliott v. Google, Inc., 860 F. 3d 1151, 1158–60 (9th Cir. 2017) (“Because a claim of genericide must relate to a particular type of good or service and because verb use does not necessarily constitute generic use, the district court did not err when it refused to frame its inquiry as whether the relevant public primarily uses the word “google” as a verb.”).

[5] Consumerist, 15 Product Trademarks That Have Become Victims Of Genericization, Consumer Reports (CR), https://www.consumerreports.org/consumerist/15-product-trademarks-that-have-become-victims-of-genericization/, Jul. 19, 2014.

[6] Thermos, Merriam Webster’s Online Dictionary, https://www.merriam-webster.com/dictionary/thermos.

[7] King-seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577 (2d. Cir. 1963).

[8] Mark E. Burge, Apple Pay, Bitcoin, and Consumers: The ABCs of Future Public Payments Law, 7 Hastings L.J. 1493, 1529 (2016) (“within a small margin of error”).

[9] Balázs Bodó, Daniel Gervais and João Pedro Quintais, Blockchain and smart contracts: the missing link in copyright licensing?, International Journal of Law and Information Technology, Volume 26, Issue 4, Winter 2018, Pages 311–336, https://doi.org/10.1093/ijlit/eay014.

[10] “BLOCKCHAIN” (Serial №86015649) — Services: “Financial services, namely, providing a virtual currency for use by members of an on-line community via a global computer network” — Refused for mere descriptiveness.

[11] “BLOCKCHAIN CAPITAL” (Serial №87476499) — Service: “Financial asset management services” — Refused for descriptiveness.

[12] “BLOCKCHAIN HOLDINGS” (Serial №87920088) — Service: “Investment advice; Investment advisory services” — Office Action refusal for mere descriptiveness.

[13] “SALT BLOCKCHAIN” (Serial №87891361) — Banking and financial services related to digitized assets, namely, allocation and placement of blockchain collateralized funds; clearing, trading, and exchange services; and facilitating the transfer of funds between sources

[14] “BLOCKCHAIN IRON” (Serial №87839352) — Issue of tokens of value

[15] “BLOCKCHAIN SHIFT” (Serial №87832883) — Financial administration of stock exchange trading of shares and other financial securities in financial markets; Financial advice

[16] Money | Crypto & Blockchain, Forbes, https://www.forbes.com/crypto-blockchain/#419c4b822b6e (last visited Apr. 11, 2019).

[17] Forbes Cryptomarkets, Forbes, https://www.forbescrypto.com/ (last visited Apr. 11, 2019).

[18] “CRYPTOCURRENCIES NEVER SLEEP” (Serial №87735891) — Financial services ,namely, providing a virtual, digital and cryptocurrency currency for use by members of an on-line community via a global computer network.

[19] “VIRTUAL CRYPTOCURRENCY ATM” (Serial №87824620) — Computer software for facilitating on-line electronic commercial transactions.

[20] Decryptionary, Decryptionary, https://decryptionary.com/.

[21] Trademark Basics: A Guide for Business, International Trademark Association (INTA), http://inta.org/Media/Documents/2012_TMBasicsBusiness.pdf (last visited Apr. 15, 2019).

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