Cryptocurrency is the future. Whether you decide to believe that or not is up to you, but one thing is certain, it’s not going away tomorrow. We’ve seen cryptocurrency over and over again slowly creep into all aspects of everyday life. Well-known financial institutions like Visa, PayPal, and so many more have already launched plans and products with the anticipation of cryptocurrency being how consumers buy products.
If you’re a trademark attorney, you might be asking yourself, “Wait, doesn’t that make cryptocurrency a form of currency instead of a product or service?” Trademark law 101, anything that receives trademark protection must be associated with a product or service. Here’s where the analysis can become a little confusing.
If we look at cryptocurrency strictly as currency, then we are doing it a disservice. There are so many different things that each company does within the crypto space. For example, some of the terminologies you might have heard are decentralization, blockchain, NFT’s, or token and coin.
You need to do a deep dive into the companies you are filing trademark applications for. If all you know is that the company is involved in cryptocurrency, not only will you be doing that company a disservice when it comes to the actual filing, but you risk an office action six years down the line when the USPTO is, hopefully, more knowledgeable about the cryptocurrency market.
Right now, is the best time to file a trademark application if you are a cryptocurrency company. The odds are the examining attorney isn’t as versed as they would need to be in cryptocurrency to refuse a mark. With SEC regulations coming down on some essential players, cryptocurrency might be entering into its “toddlerhood.” The cryptocurrency space is growing, and this is the right time for cryptocurrency companies to start protecting their brands. You might be asking, “Well, how much infringement can be going on”? Simply look up the logos for 1Inch and Uniswap, and you will begin to see how we are approaching likelihood of confusion territory.
Another vital thing to know is that some cryptocurrencies carry functional value while others are designed to be a store of value. The most famous cryptocurrency out there, the “OG” of them all, is Bitcoin. Bitcoin, however, has no actual utility. The entire purpose of Bitcoin is to pay miners in Bitcoin to complete blocks of verified transactions that are then added to the blockchain. The argument is that as it currently sits, Bitcoin is a store of value. A store of value is an asset, commodity, or currency that maintains its worth and can be exchanged in the future without deteriorating in value.
Different from Bitcoin would be a cryptocurrency like XRP. XRP is a token used for representing the transfer of value across the Ripple Network. XRP is not mined and is supposed to work more like a traditional stock. Its value rises as the value of the Ripple Network rises. Ripple itself is a company that is putting cross-border payments on steroids. Imagine the swift banking system, but reliable and taking a fraction of a second instead of 10 days at a time.
Where does Trademark law come into all this? Well, first, it’s important to know what we are trademarking before we can go ahead and submit the application. The last thing you want is a refusal from a USPTO examining attorney and not know how to respond. The second thing is, as mentioned above, there are distinctions among definitions in the cryptocurrency space. There’s a difference between a token and a coin. Are you applying for the name or logo of a coin or an exchange? Does the company that wants the trademark to distribute the coins themselves? These are some answers you are going to want before ultimately applying.
You are probably reading this article because you want to know what Trademark Classes you should register your crypto in. You need to have a thorough conversation with the company or person you are working with and make sure you have at the very least a basic understanding of cryptocurrency to register the mark in the suitable classes. That being said, the following are the most common:
Class 9: Electrical and scientific apparatus
Class 36: Insurance and Financial
Class 42: Computer and Scientific
If you’re a trademark attorney, you know it’s not as simple as just choosing the classes, and if you are not, this next part will be important.
When writing this post, I researched several different coins/tokens in Coin Market Cap’s top 50. I decided that the following were good examples of some general class definitions that may help prepare your trademark application.
Class 9: Computer application software for blockchain-based platforms, namely, software platforms for distributed applications and software using a consensus engine incorporating blockchain technology for securing data with cryptographic information; computer software platforms for developing and building of distributed software applications and distributed computing platforms; computer software platforms for blockchains.
To see if your crypto brand or company meets this definition, the best thing to do is research Ethereum and Uniswap Labs. When you are talking to your client, see what role they have in distributing their coins. It is important to note that this class is not for the coins/tokens themselves. Instead, class 9 should be used for companies that may offer a way to transact their coins with the exchanges. The consumers, in this case, are not the people buying the tokens per se, but instead the exchanges that trade the coins. This class can also be used for Cryptocurrency wallets. Wallets are essentially an alphanumeric code tied to a specific user in which said user could hold their cryptocurrency assets.
Class 36: Cash management services, namely, facilitating and tracking transfers of electronic cash equivalents; virtual currency exchange transaction services for transferrable electronic cash equivalent units having a specified cash value; currency exchange services; online, real-time currency trading services; digital currency exchange and transaction services for transferable electronic cash equivalent units having a specified cash value; financial services, namely, providing a virtual currency for use by members of an online community via a global computer network.
This is one of the classes you will want to use for the coin itself and the company mark. The reason being is that coins themselves are transferable for cash. When a person is looking to buy cryptocurrency on an exchange, they look for the specific coin or token and its attached cash value. It’s like buying anything else, with the difference being the real-time change in value. You will see during the application process that class 36 has the least amount of options for class descriptions, making it extra important to make sure this class applies.
Class 42: Electronic data storage services, namely, storage of electronic data; software as a service (SAAS) services featuring software for electronic data storage and electronic data storage rental in the nature of protocols and software that coordinates the rental of electronic and cloud data storage by tracking, reporting, managing, allocating, reserving, preserving, and deploying electronic data resources and by backing up, synchronizing, and sharing data between computers and electronic devices; software as a service (SAAS) services featuring software for providing a virtual currency for use by members of online communities via a global computer network; software as a service (SAAS) services featuring software for providing access to the Internet; software as a service (SAAS) services featuring software for the collecting, editing, organizing, modifying, bookmarking, transmitting, storing, or sharing of audio, video, or other multimedia files, software, digital files, electronic broadcasts, or data; software as a service (SAAS) services featuring software for electronic data storage and electronic data storage rental services in the nature of protocols and software that coordinates the rental of electronic and cloud data storage by tracking, reporting, managing, allocating, reserving, preserving, and deploying electronic data resources and by backing up, synchronizing, and sharing data between computers and electronic devices; software as a service (SAAS) services featuring software for providing a virtual currency for use by members of online communities via a global computer network.
Last but not least, class 42 is very popular amongst cryptocurrency companies and the USPTO. The best comparison to this was Filecoin, but others have similar descriptions such as XRP, Uniswap, Ethereum, and bitcoin. Like in Class 36, this is a class that can be used for the coin/token. The critical thing to remember is that this class functions as a token source. Typically, it means that you can make transactions through the company itself for their specific coin or token. Some cryptocurrency companies do this to incentivize their consumers to reinvest into other projects in their network.
Ultimately, the USPTO and the law, in general, are still catching up to the cryptocurrency world. I believe in the future it will be harder to get trademark protection for certain coins. The important thing to remember is that, for the most part, cryptocurrency companies have products that work as both a service and a good. Developing a better understanding of how cryptocurrency works will help you file for trademark registrations confidently and effectively.