by Jim Gatto, Partner at Pillsbury Winthrop Shaw Pittman, and Brian Klein, Partner at Baker Marquart
The Bitcoin Foundation believes that the term “BITCOIN” alone should not be the intellectual property of any individual or entity. Rather, it is a generic term like the terms used for other currencies such as “dollar”, “euro,” “yen,” etc. The Foundation is committed to doing what it can to protect the term “BITCOIN” for public use.
As some Foundation members may be aware, in the US and abroad, individuals and entities have sought to register marks containing the term “BITCOIN” either alone or with other terms. The Foundation has worked with outside legal counsel Pillsbury Winthrop Shaw Pittman LLP (a leading global law firm) and Baker Marquart LLP (a civil litigation and criminal defense boutique law firm) to identify the registration of marks and to develop a legal strategy to help keep “BITCOIN” in the public domain.
The following is an overview of what is happening in the US and abroad. This is not intended as legal advice and should not be relied upon by anyone as such. This overview is provided for informational purposes only.
As of mid-December 2014, there are 35 marks in the US Patent and Trademark Office’s (USPTO’s) online records that contain the word “Bitcoin.” Only 5 of the marks have actually been registered: “BITCOIN OF AMERICA,” “AMERICAN BITCOIN,” “EASY BITCOIN,” “MILLY BITCOIN,” and “BITCOIN MAGAZINE.” The remaining marks are going through the application process.
EASY BITCOIN and MILLY BITCOIN are on the Principal Register, which provides the holder with a presumption of valid trademark rights, as well as other valuable benefits.
These two mark have been registered with disclaimers of the term “BITCOIN.” The USPTO will generally require an applicant to disclaim merely descriptive or generic words in an otherwise registrable mark. A disclaimer does not remove the disclaimed word or phrase from the mark. It is simply a statement indicating that no exclusive rights are claimed in the disclaimed word or phrase, separate and apart from the mark as a whole.
The marks “BITCOIN OF AMERICA,” “AMERICAN BITCOIN,” and “BITCOIN MAGAZINE” have been registered on the Supplemental Register, the lesser of the two federal trademark registers (i.e., the Principal Register is the main and strongest register).
Unlike a registration on the Principal Register, a Supplemental Register registration is not prima facie evidence of anything except that a registration has issued. Marks registered on the Supplemental Register are very difficult to enforce and are usually only useful as defensive mechanisms. Most people will opt for the Supplemental Register under the belief that a registration on the Supplemental Register is better than no registration at all. And, generally, that tends to be true. (For more information on the Supplemental Register, see Footnote 1 below.)
The term “BITCOIN” is now either highly descriptive or generic. Our legal analysis leads us to suspect that the USPTO will not allow any mark containing the word “BITCOIN” to register on the Principal Register without a disclaimer of the word. Thus, if you have the term “BITCOIN” in your name and want to register it on the Principal Register, you can (and should) disclaim the term “BITCOIN” when seeking to do so. It is possible that a mark could slip through the prosecution process without a disclaimer, either because the USPTO finds the mark to be unitary (and, thus, not eligible for a disclaimer) or because a mistake is made. But the odds of that happening at this point in time would be slim.
The Bitcoin Foundation intends to work with the community when deemed appropriate to help oppose US marks that are published without disclaimers of the term “BITCOIN” on the Principal Register. (Supplemental Register marks are not published and cannot be opposed). To that end, the Foundation has implemented a trademark watch of the USPTO’s records to help identify those marks prior to publication and when the Foundation has standing, it will be in a position to oppose US marks that do not have disclaimers.
Outside of the US, as of mid-December 2014, 103 marks containing the term “BITCOIN” were uncovered (there may obviously be more). Pillsbury Winthrop’s search revealed:
15 marks in China
10 marks each at the European Union and in Brazil
8 marks in Canada
5 marks each in France, India, Chile, Argentina and Turkey
4 marks each in the United Kingdom and Australia
3 marks each in Portugal, South Korea, and Spain
2 marks each in Mexico, Switzerland, Taiwan, Japan, and Ireland
1 mark each in Austria, Estonia, Germany, Italy, Poland, Romania, Ukraine, and Paraguay
About one-third of these marks have already registered, which means it would be too late to oppose them.
Unlike the US, most countries do not require disclaimer of descriptive or generic words in a mark and none have a Supplemental Register. That said, it can be very difficult to register a descriptive mark outside of the US – unless that mark is part of a logo, which changes the analysis into whether the logo is creative enough to “carry” a mark to registration when it would not have been registrable absent the logo.
The Bitcoin Foundation has set up an international watch service to identify filed or published marks containing the term “BITCOIN” and will decide (with the assistance of local agents) whether to oppose any published marks of interest. The costs of oppositions abroad may be prohibitive for the Foundation, so it will need to do a case-by-case analysis to determine when it is appropriate to oppose.
Footnote 1: In litigation, a Supplemental Register registration will not, prima facie, receive protection as a valid trademark, as its very presence on the Supplemental Register indicates a preliminary determination that the mark is not distinctive of the goods or services upon which it is used. But the owner of a Supplemental Register registration can try to show that its mark has acquired what is known as secondary meaning in the marketplace and, thus, ought to be protectable as a trademark. Further, the owner of a registration on the Supplemental Register is entitled to the following benefits: 1) use of the official federal registration symbol; 2) protection from the registration of confusingly similar marks; 3) the ability to bring suit for infringement in federal court; 4) the ability to seek registration on the Principal Register at a later date based on a claim of acquired distinctiveness; and 5) indefinite renewals.