Vitalik, we’ve got to talk. It has come to our attention that your foundation has been using the “Ethereum” mark for several years now. However, my company has owned the “Ethereum” trademark ever since we registered it last week. Since we have not given you permission to use our trademark, we’re going to need you to send us 3-5 Eth.
But don’t worry, we’ll send you more ETH back.
The preceding paragraph might sound like a bad joke. But trademark law is no laughing matter, and a UK-based store has been ordered to stop infringing on another company’s trademark. The offending material? T-shirts with the word “Bitcoin.”
The Cease-and-Desist consisted of several scary-looking pages of legalese from a law firm representing “the owner of the BITCOIN trademark.”
“[Our client] has not authorized your use of the BITCOIN trade mark on and in relation to clothing,” the letter states, before threatening that they “will inevitably succeed should it be necessary to bring proceedings against you for Trade Mark Infringement,” with further threats of injunctions, damages and legal proceedings.
It’s usually nice to end letters on a warm note, and the lawyers extended a token of their clients’ generosity. “Our client remains keen to refrain from bringing legal proceedings against you,” provided the seller adhere to a long list of demands, including sending the litigant their unsold merchandise and agreeing to pay “any written demands.”
A New Kind of Trolling
Although our Etsy storeowner hid the identity of their litigious correspondent, it didn’t take much sleuthing to find the culprit. ABC IP Holdings SouthWest LLC registered the UK Trademark for BITCOIN back in December. The mark allows them exclusive use of the word “BITCOIN” in three categories, from “adhesive bras” to “yellow rice wine.” A full list of all the categories in which the trademark has been claimed is available in PDF form here.
Interestingly, ABC IPHOLDING is also pursing a trademark for “WESTWORLD,” which is sure to please HBO.
This isn’t the first time someone tried to take credit for Bitcoin (lookin’ at you, Craig Wright). Patent trolling is more common—since thinking up an idea is much cheaper than seeing it to fruition, many companies file patents and let others do the heavy lifting.
Cryptocurrencies are open-sourced, making them particularly vulnerable to trademark trolling. There’s no one company responsible for protecting the brand, the foundations have limited funds, and with trademarks, you use them or lose them.
Litecoin has faced several similar cases, causing several headaches for the nonprofit Foundation. One would think that the fact that Litecoin already existed as a product and entity would be protection enough. “That would make the most sense from a logical perspective,” wrote a review in CoinJournal, but logic isn’t enough where judges are concerned.
Dogecoin also got bitten by a few trademark fleas which resulted in some plaintive whimpering in the Shibe community.
Can you really trademark Bitcoin? Really?
The short answer is, not for long. In the UK (as in the US) descriptive words cannot be trademarked. You could trademark a larger phrase, like “HODL BITCOIN,” or a specific font/color combo, but the word itself is fair game.
The distinction is explained by Sausser Summers PC, on a website helpfully titled onlinetrademarkattorneys.com. Because “BITCOIN is a common term to describe a type of digital currency,” the attorneys say, anyone can use the word “Bitcoin” and no one can claim ownership of it.
That doesn’t stop people from trying, and sometimes they get lucky. The question has come up before, with a little company called Mt. Gox. Although the exchange successfully registered the name “Bitcoin,” it probably shouldn’t have been granted. IP lawyers told CoinDesk that “It may be that the trademark examiner looking at this application wasn’t really sure what it was, and just gave it to them.”
However, challenging a trademark is no easy task, even if ABC IPHoldings is not the real name of Satoshi Nakomoto. Patent (and trademark) trolls rely on intimidating their opponents with legal fees, and the threat usually works. You’d have to sell a lot of T-shirts to make that lawsuit worthwhile.
At least Vitalik Buterin can sleep easy, though. The Ethereum Foundation has covered its bases, and made sure to register its trademarks.
The author is invested in Ether and Bitcoin. Trademarks pending.