Blockchain Legal Resource

A recent dispute over trademark ownership to the name of meme-fueled Dogecoin highlights the importance of trademark rights in the ever-growing world of cryptocurrencies.

Originally created in 2013 by two engineers as a joke, Dogecoin has since meteorically risen in popularity and value, having obtained a market capitalization as high as $80 billion earlier this year.

The 2013 founders did not apply for a trademark for Dogecoin until 2021, when the founders’ Colorado-based non-profit, the Dogecoin Foundation, filed an application with the USPTO this past August.

Currently, there are at least 100 other cryptocurrencies—not associated with the original Dogecoin or Dogecoin Foundation—that utilize the Dogecoin name. Adding to the potential confusion, a Cook Islands-based company, Moon Rabbit AngoZaibatsu, also unaffiliated with the Colorado-based Dogecoin Foundation, recently applied for a trademark for Dogecoin earlier this year. And Moon Rabbit AngoZaibatsu’s founder created his own Cook Islands “Dogecoin Foundation” based on a stated belief that the Colorado-based Dogecoin Foundation was abandoned.[1]

Now the original Colorado-based Dogecoin Foundation is attempting to assert its rights to the Dogecoin name. The company said that the Cook Islands Dogecoin is seeking to unfairly profit off the goodwill Dogecoin built, and in August sent a demand letter to yet another project, called Dogecoin 2.0, requesting the project change its name.

These disputes will take time to resolve, and highlight the ramifications of not working to secure intellectual property (here, trademark) rights at the outset, i.e., when kicking off a project and creating and naming a cryptocurrency. Procuring trademark rights to cryptocurrencies is not as straightforward as obtaining a trademark for a business name, or a generic good or service.

A trademark is a word, name, symbol, design, or phrase used to identify and distinguish a product or service and to indicate the source of the product or service. The requirements can pose challenges when attempting to trademark a cryptocurrency.

A cryptocurrency may not qualify as a product or service if its sole function is merely as a medium of exchange, such as a traditional currency. However, a good or service associated with a function could enable a cryptocurrency name to be trademarked. Examples of goods and services descriptions contained in registered trademarks associated with cryptocurrencies are instructive:

• “Providing on-line non-downloadable computer software for use as a cryptocurrency wallet” (Class 42, for “Turtlecoin” reg. no. 5846770);
• “Software as a service (SAAS) services featuring software for independent and integrative use of Cryptocurrency.” (Class 42, for “Safecoin,” reg. no. 4822808); and,
• “Design, development, and implementation of software for cryptocurrency, utility token, digital asset; Providing on-line non-downloadable computer software for use as a cryptocurrency wallet; Technological consulting in the field of cryptocurrency.” (Class 42, for “faithcoin,” reg. no. 5701812).

Applicants should thus consider particular goods and services associated with a cryptocurrency when applying for a trademark.

Another challenge of registering a trademark for a cryptocurrency is that the mark must identify a source of the goods or services associated with the mark. The USPTO could refuse to register Dogecoin on this basis if, for example, it finds that the public does not associate Dogecoin with the Colorado-based (or Cooks Islands-based) Dogecoin Foundation, but instead merely associates Dogecoin with the cryptocurrency itself. The USPTO already found the term “Bitcoin” generic and merely descriptive of goods and services relating to online payments.[2] This concern may be less of an issue for applicants whose cryptocurrency has not achieved the acclaim and notoriety of Bitcoin or Dogecoin, but it is important to avoid using a cryptocurrency name in a generic manner to prevent the name from falling into the public domain.

Overall, while there are specific requirements to obtain a US trademark, the earlier a cryptocurrency company considers and begins that process, the better. (Otherwise, it may not be possible to stop others from using the name in a confusing manner, or even from acquiring their own rights.)

[1] See, e.g., https://www.wsj.com/articles/dogecoin-copycats-trademark-fight-erupts-over-joke-crypto-worth-billions-11631638106?mod=itp_wsj&mod=djemITP_h.

[2] See e.g., Office Action, Appl. Ser. No. 88057882 (Nov. 27, 2018).