by Trademark Garden | April 20, 2018
With the Bitcoin boom of early 2018, cryptocurrency is one of the hottest things in the fast moving and competitive world of tech startups. In simplified terms, cryptocurrency is a decentralized form of currency that exists on a “distributed ledger,” a copy of which is kept by every holder on the currency instead of being kept by a central institution such as a bank. When a transaction is made, it is bundled with other transactions into a “block” and encrypted. Users called “miners” use their computers to decrypt the blocks. The first miner to decrypt a block and transmit the solution to all users, has units of cryptocurrency called “coins” added to their account, and sees the block added to the “blockchain” which is an ongoing ledger accessible to all users of all transactions.
The highly technical nature of blockchain technology, combined with the fact that coins are technically a medium of exchange and not a good or service in of themselves, has led to a lot of confusion about the ability of crypto companies to properly protect their brands by trademarking their services. The good news is that most crypto related services can be protected via trademark fairly easily by an attorney experienced in the field, and even the names of coins may potentially be protectable. Keep in mind, however, that the usual caveats apply. For example, the USPTO considers the terms “BLOCKCHAIN” and “BITCOIN” to be generic, and would therefore refuse an application for generic terms like “BLOCKCHAIN NETWORK” or “BITCOIN CAFÉ.” On the other hand, this means that you are free to include the words BLOCKCHAIN and BITCOIN in your trademark, as long as you also include your own distinctive term(s), e.g., the trademark registration for BITCOIN.GURU.
Moving to specific crypto related services, a cryptocurrency exchange can be trademarked as a Class 036 financial exchange, just as any other financial exchange would be, as well as a Class 042 software as a service (SAAS) allowing the exchange of cryptocurrency. In most cases both classes are appropriate, as most crypto exchanges are financial exchanges enabled by a SAAS suite. These trademarks are almost always successful if filed properly, as there is nothing sufficiently different about a cryptocurrency exchange versus any other financial exchange that would rob such exchanges of trademark rights.
Likewise, consulting services that relate to cryptocurrency can be trademarked as either a Class 036 financial consulting service, or a Class 042 computer consulting service. Somewhat unlike exchanges, only a single class is probably necessary in this case. Class 036 would apply if the consulting relates primarily to financial considerations like valuation of the currency or trading strategy, and Class 042 would apply if the consulting regarded the actual programming of a cryptocurrency blockchain or related software. Again, these trademarks should be successful when filed properly, as a consulting service is a consulting service as far as the USPTO is concerned. Along a similar vein, providing educational articles, videos, blogs, or lectures on the topic of cryptocurrency would be trademarked as a Class 041 educational and/or entertainment service just as any other such service. Again, you would file in Class 041 as whatever type of education or entertainment service you provide, and just mention in the identification of goods and services that your services involve cryptocurrency.
Last but not least, the coins themselves are technically a medium of exchange and not a good or service, making them a somewhat difficult sell for trademark protection, at least on paper. In practice, however, the name of the coin can be trademarked as either a Class 036 financial service for example as: “Financial services, namely, providing a virtual currency for use by members of an on-line community via a global computer network” or in Class 042 as a SAAS, for example as: “Software as a service (SAAS) services featuring software for clearing, allocation, compliance, recordation and settlement of trading related to bitcoins.” The trademark is technically not for the medium of exchange, but rather the service of digitally providing the coins, enabling their recordation and exchange, etc. however the purpose served is essentially the same. After all, if someone was to try to use your trademark to name their coins, would they not also be providing, enabling the exchange of, and recording transactions under your trademark as well? They would, and so your trademark is likely to protect you, even though you technically haven’t trademarked the coins themselves.
The most famous example of a trademarked cryptocurrency is probably RIPPLE which is trademarked in Class 036 as “Currency exchange services; on-line real-time currency trading; cash management, namely, facilitating transfers of electronic cash equivalents; virtual currency exchange transaction services for transferable electronic cash equivalent units having a specified cash value; electronic funds transfer, namely, transmission of currency via computer terminals and electronic devices; electronic funds transfer, namely, transmission of virtual currency and digital currency via electronic communication networks.” Again, notice that the coins themselves are not technically trademarked, but they might as well be given that any service related to the coins which a competitor would need to provide should they provide coins is covered by the trademark protection.
We hope this helps, and, as always, we recommend that you retain a licensed and experienced attorney before you proceed with attempting to trademark your cryptocurrency trademark. Trademark Garden is experienced in all manner of cryptocurrency trademark applications and would be happy to assist you across all 50 states and abroad.
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