TokenPocket App Taken Down from Apple's App Store in Trademark Dispute with PayPal

A recent dispute between PayPal and TokenPocket displays the importance that enforcement efforts on third-party platforms can have in the trademark area.

 

Parties:

-PayPal is the well known provider of online payment services. PayPal uses a stylized "P" logo and owns trademark registrations for the logo, including U.S. Reg. No. 6275156 for the following mark:

-TokenPocket provides cryptocurrency wallet services. According to its listing on the Google Play App Store, "TokenPocket is the most popular multi-chain Crypto&DeFi wallet.” See: https://play.google.com/store/apps/details?id=vip.mytokenpocket&hl=en_US&gl=US

 TokenPocket uses a stylized "TP" logo, which can be seen below:

Dispute:

-In a message posted to its website on November 4, 2021, TokenPocket announced that its App had been taken down from the Apple App Store because "PayPal unilaterally filed a complaint with the TokenPocket trademark issue". 

-TokenPocket indicated that it had previously received a legal demand letter from PayPal and that they "want to resolve [the dispute] in a friendly negotiation way, [but] PayPal has no more replies to this."

-TokenPocket went on to state that it has been offering services in the blockchain field since at least as early as 2018, and that PayPal only began to invest in blockchain projects in 2019 and did not have a "corresponding landing action" until 2021.

 See: https://tokenpocket-gm.medium.com/announcement-on-the-temporary-removal-of-the-ios-version-of-tokenpocket-by-the-app-store-1e1648be8ba4

Comments:

-It appears that the dispute is in its early stages, with PayPal allegedly having sent a demand letter to TokenPocket followed by a takedown notice to a third party platform (Apple's App Store).

-Based on its comments on the dispute, it appears that TokenPocket is pushing back against PayPal's demands, and may be taking the position that there are sufficient differences between the two logos to prevent any consumer confusion, and that in any event, it has priority over PayPal in the blockchain space.

-In the interim, however, PayPal has been able to achieve an early victory by allegedly getting TokenPocket's app taken down from the Apple App Store.

-Regardless of the ultimate outcome, this dispute highlights the importance of trademark enforcement efforts on third-party platforms, which can give significant strategic advantages to trademark owners.

Chia Network Trademark Dispute

 

 

[UPDATE: it appears that Chia Network agreed to retract its demands against the blogger. See: https://thechiaplot.net/2021/06/09/chia-networks-drops-all-claims-against-the-chia-plot/ ]

 

Most trademark disputes involve competitors (or companies operating in arguably related areas). However, occasionally a trademark complaint will arise where the trademark owner is not seeking to prevent a competitor from using a similar mark, but rather is attempting to prevent a blogger or reporter from distributing critical commentary about the company. 

 

A dispute in the news today involving the blockchain company Chia Network (www.chia.net) appears to fall in (or close to) the latter category. According to reports, Chia sent a cease and desist email to a blogger who had recently started distributing a blog with critical commentary about Chia at the domain name www.thechiaplot.net.  Chia allegedly advised the blogger that he could not continue using the CHIA mark in his domain name “or anywhere” without Chia’s written permission. After refusing Chia’s demands, it appears that the dispute escalated and the blogger has now retained a lawyer to defend him. See:

https://www.coindesk.com/chia-legal-chris-dupres-trademark

 

https://www.techdirt.com/articles/20210603/01182446919/chia-cryptocurrency-started-bittorrent-creator-bram-cohen-engaging-obnoxiously-bogus-trademark-bullying.shtml

 

In the US, courts would likely reject an attempt to prevent a reporter or blogger from merely using a trademark in a reporting context, depending of course on the particular facts and circumstances of the case (e.g. assuming that the use of the mark is made merely for commentary purposes and not as part of a commercial effort to profit from the mark).  For example, there was a case where a blogger posted a critical article concerning his experience with BidZirk, an auction listing company.  BidZirk filed a lawsuit, and the court ruled in favor of the blogger, holding that the blogger was immunized under the "news reporting" defense. See: http://www.internetlibrary.com/cases/lib_case515.cfm

 

While all of the facts about the Chia dispute are not yet known, one initial lesson that can be learned from this dispute is: trademark owners would be wise to tread carefully when it comes to enforcing their rights where the complained of usage may qualify as news reporting or fair use, as even the appearance of being a ‘trademark bully’ may outweigh any potential benefits of removing the content in question (and the pursuit of such a claim may lead to the unintended consequence of drawing much more attention to the content than otherwise would have been the case).

GOOD MONEY vs. GOODDOLLAR

 

A recent trademark dispute between Good Money and GoodDollar provides another example of a dispute involving an opposition in the US Trademark Office.

 

Parties:

-Good Money provides online banking services, and also offers a feature where customers can buy and transfer cryptocurrencies. See: https://www.goodmoney.com/buy-and-sell-cryptocurrency-with-good-money-2-0/ . Good Money owns a US trademark application (filed in February 2018) for the mark GOOD MONEY covering the following services:

·       Class 36: Financial services, namely electronic transfer, exchange and conversion of cryptocurrency for use by members of an on-line community via a decentralized computer network

 

-According to its website, GoodDollar is a “non-profit organization on a mission to leverage new blockchain technologies to deliver a scalable, sustainable model to deliver basic income. GoodDollar has built a wallet that enables any human with an internet connection to sign up and claim a small daily income in G$ coins.” See: https://www.gooddollar.org/faq/

 

Dispute:

-In September 2018, Gooddollar Limited filed a US trademark application for the mark GOODDOLLAR covering various goods and services, including:

• Class 9: computer software for cryptocurrency and digital tokens operating system programs that allow use of cryptocurrency and digital tokens on a global computer network; computer software for facilitating the use of a blockchain and distributed ledger to execute and record financial transactions, namely, trades, in connection with the use of cryptocurrency and digital tokens; software for financial information, namely, software that enables holding and transferring digital tokens and receiving information about the digital token transactions;
• Class 36: Cryptocurrency and digital tokens trading and exchange services; issuance of tokens of value; charitable fundraising; charitable fundraising services, by means of selling cryptocurrency and digital tokens; philanthropic services concerning monetary donations and the redistribution of wealth in the nature of providing universal basic income to individuals designed to create equality and reduce poverty;
• Class 42: software as a service (SAAS) services, featuring software for use by others for use in the cryptocurrency, digital tokens and blockchain markets for charitable purposes, namely, software that allows individuals to exchange cryptocurrency and fiat currency to cryptocurrency for purposes of charitable donations; software as a service (SaaS) services featuring software for making investments.

-The GOODDOLLAR application was approved by the US Trademark Office and published for opposition in August 2019.

 

-The Application was then opposed by Good Money on the basis that the GOODDOLLAR mark is likely to cause confusion with the GOOD MONEY trademark. Following is an excerpt from the Notice of Opposition:

• “Due  to  the  similarities  between  the  parties’  respective  marks  and  goods  and services, consumers and prospective consumers are likely to be confused or mistaken in the belief that Applicant’s goods and servers are sold or offered for sale under Applicant’s GOODDOLLAR mark  emanate  from  or  are  in  some  way  sponsored,  endorsed  or  approved  by, or affiliated, connected or associated with GMG.”

 

 -GoodDollar filed an Answer denying Good Money’s allegations, and the parties then agreed to suspend the proceeding to engage in settlement discussions. 

 

Outcome:

-It appears that the parties have reached a settlement based on a filing submitted by GoodDollar in March 2021. GoodDollar requested that its application be amended to add the following limitation to the description of services:

• “all of the aforementioned being in relation to not-for-profit purposes that promote, advocate, and support Universal Basic Income (UBI)”

-The filing also stated that, pending confirmation of the acceptance of the amendment, Good Money agreed to withdraw the Opposition.

-Therefore, it appears that in this case the parties were able to reach an agreement before either side was required to incur too much time and expense.

Trademark Dispute: Intuit’s Mint vs. Mintable

A recent trademark dispute between Intuit and Mintable provides a good example of one type of dispute that often arises in the trademark space, namely a dispute involving an opposition to another party's attempt to register a trademark.

Parties:

-Mintable provides an online marketplace for digital items on the blockchain (e.g. NFTs). See: https://mintable.app/ .

-Intuit is a financial software company best known for its TurboTax and QuickBooks products. Intuit also offers a product named Mint, which is a personal financial management platform and app. See: https://mint.intuit.com/ .

 

Dispute:

-In May 2019, Mintable filed a US trademark application for the MINTABLE trademark covering the following services:

·       Class 36: Issuance of tokens of value

·       Class 42: File sharing services, namely, providing a website featuring technology enabling users to upload and download electronic files; Providing an interactive website featuring technology that allows users to upload, download, share and sell custom and branded digital publications.

-The Application was approved by the US Trademark Office and published for opposition in November 2019.

-The Application was then opposed by Intuit on the basis that the MINTABLE mark is likely to cause confusion with Intuit’s MINT trademark. Following is an excerpt from the Notice of Opposition:

·       “Intuit brings this Opposition due to the likelihood of confusion between its distinctive and well-known MINT and MINT family of marks and Applicant’s applied-for mark.  Since 2007, Intuit’s MINT branded web-based services and corresponding mobile software applications have allowed users to manage their finances via the Internet, monitor and track their financial accounts, engage in financial planning, and learn about personal finance.  Additionally, over time, Intuit’s MINT branded web-based services and corresponding mobile software applications have expanded to allow users to manage ever more of their financial lives within its MINT offerings.  Since January 2014, the MINT website and applications have allowed users to track and monitor their digital currency assets and accounts, including downloading and viewing specific digital currency transactions, balances, and payments.”

 

Outcome:

-Mintable did not contest the Opposition and Intuit was granted judgement by Default in August 2020. As a result, the MINTABLE trademark application was abandoned.

-However, Mintable is still using the MINTABLE trademark (see: https://mintable.app/). It is unknown whether Intuit also objected to Mintable’s use of the MINTABLE trademark (in addition to its objection to Mintable’s attempt to register the mark). If so, it is possible that the parties reached a settlement that permitted Mintable to continue using the mark under certain conditions.