Case To Watch: .CRYPTO Trademark Application
Unstoppable Domains filed a trademark application to
register the .CRYPTO mark in the United States, but the application has
encountered objections from the Trademark Office. Unstoppable Domains is now
attempting to overcome the objections. This blog post will briefly explore the objections
and the arguments Unstoppable Domains has submitted in response.
(1) The Application:
The application for the .CRYPTO mark was filed in early
2019.
The application covers not only domain name registration
services (in Class 45) but also a broad scope of other services such as:
-bill payment services (in Class 36),
-electronic messaging services (in Class 38) and
-software development services (in Class 42).
The full listing of services can be seen on the USPTO
website here:
https://tsdr.uspto.gov/#caseNumber=88276683&caseType=SERIAL_NO&searchType=statusSearch
After reviewing the Application, the Trademark Examiner
issued an Office Action raising various objections, which are summarized below.
(2) Objections
(i) Likelihood of Confusion:
In the United States, the Trademark Office performs a
substantive review of each new trademark application, and one of the potential grounds
for refusal is if there is a pre-existing registration or application owned by
a third-party for a mark that is confusingly similar to the applied-for mark.
In this case, the Trademark Examiner cited as an objection
a prior registration owned by Bigfoot Ventures, LLC for the mark “CRYPTO”,
which covers a broad scope of services including:
- provision of business and commercial information in
the field of business management; business consultancy services; assistance and
advice regarding business organization and management; advertising services
(in Class 35); and
-Telecommunication access services; electronic
transmission of data; electronic transmission of images, photographs, graphic
images and illustrations over a global computer network; electronic
transmission of data, audio, video and multimedia files (in Class 38)
In an effort to overcome the objection, Unstoppable Domains
has submitted a response to the Trademark Office in which it:
- agreed to delete all of the services in Classes 36, 38
and 42 from its application (thereby leaving only Class 45); and
- argued that the Examiner previously conceded that the
likelihood of confusion objection would apply to Classes 36 and 38 only (and
not Class 45).
The Examiner will now consider their response, and either
withdraw the objection or issue another Office Action maintaining the refusal
(in which case Unstoppable Domains will have an opportunity to submit further
arguments).
[As a separate point of interest, it is noteworthy that the
owner of the cited registration—Bigfoot Ventures, LLC—is associated with a
controversial figure in the trademark and domain fields named Michael
Gleissner, who has been accused of being a trademark troll and domain
cybersquatter. See:
https://www.worldtrademarkreview.com/brand-management/what-brands-need-know-about-trademark-activity-michael-gleissner-infographic
https://onlinedomain.com/2016/09/08/domain-name-news/michael-gleissner-udrp-tracker-reverse-domain-name-hijacking-rdnh/
At this point, Bigfoot Ventures has not formally opposed
Unstoppable Domains’ application—the Trademark Office has cited Bigfoot
Ventures’ application on its own. However, if Unstoppable Domains is able to
overcome the objections from the Trademark Office and its application is
allowed to proceed to publication, at that point Bigfoot Ventures could elect
to file an Opposition.]
(ii) Descriptiveness:
A mark that is merely descriptive of the goods or services
identified in an application may not be granted registration on the Principal
Register (absent a showing of acquired distinctiveness). A mark is considered
to be "merely descriptive" if it immediately conveys an ingredient,
quality, characteristic, function, feature, purpose, or use of the specified
goods or services.
In this case, the Examiner cited Wikipedia evidence to
support the finding that “CRYPTO” is an abbreviation for “cryptocurrency,”
which is a type of “digital asset” that “works through distributed ledger
technology, typically a blockchain”. Therefore,
the Examiner concluded that the term “Crypto” “merely describes a feature or
characteristic of applicant’s financial and software services whereby the
services incorporate cryptocurrency and blockchain technology.”
In response to the objection, Unstoppable Domains submitted
arguments, including:
- Because it has agreed to delete all of the services in
Classes 36, 38 and 42 from the application, the refusal should be withdrawn if
it only pertained to any of the deleted services rather than the remaining
services in Class 45.
- The mark .CRYPTO is not descriptive of Unstoppable
Domains’ domain name registration services because blockchain domains are not
cryptocurrency but rather non-fungible tokens. In contrast, Unstoppable Domains
argue, cryptocurrency is a fungible blockchain based currency.
- There is no evidence that demonstrates that “crypto” or “cryptocurrency”
is synonymous with
blockchain technology or with domain services in particular.
(iii) Failure to Function as a Service Mark
Another potential basis for refusal is if the applied-for
mark fails to function as a trademark because it is merely informational (e.g. “The
World’s Best Down” for bedding) or is a commonly-known phrase (e.g. “Taco
Tuesday”). The relevant inquiry is whether
the mark would be perceived by consumers as a source identifier or merely as an
informational or common phrase.
Here, the Examiner determined that the “.Crypto” mark will
not function as a service mark because the mark will serve only to indicate a
top level domain and will not separately identify applicant’s domain
registration services or otherwise serve as a source indicator for such services.
In other words, the Examiner believed that consumers would perceive the mark as
merely identifying a particular TLD (.crypto) rather than identifying Unstoppable
Domains’ domain registration services.
This finding is consistent with the Trademark Office’s standard
position on marks comprised solely of gTLDs owned by domain registry operators,
i.e. that they fail to function as trademarks because “consumers are
predisposed to view gTLDs as merely a portion of a web address rather than as
an indicator of the source of domain-name registry operator.” See: https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e12845.html
For example, in a recent decision the TTAB upheld a refusal
to an application for the mark “.SUCKS” filed by the registry operator of the <.sucks>
gTLD. See: http://thettablog.blogspot.com/2020/11/precedential-no-37-suck-gtld-fails-to.html
Unstoppable Domains has submitted arguments in response to
the objection, including:
- That the Trademark Office’s standard position on the
registrability of gTLDs is not applicable to the .Crypto mark because it is not
a “gTLD”, and Unstoppable Domains is not a “domain registry”. Instead, Unstoppable
Domains offers domain registration services for blockchain domains,
which, they argue, are significantly different from traditional domain names
(e.g. Unstoppable Domains is not responsible for keeping website contact
information records, and once the blockchain domains are registered, the holder
of the blockchain domain has complete control over the domain).
- The relevant consumers perceive the branding component of
blockchain domains as source identifiers and in view of competing sources of
blockchain domains, the branding component of blockchain domains, such as the .Crypto
mark, should be afforded trademark protection in order to prevent consumer
confusion. In other words, Unstoppable Domains, is arguing that because the
blockchain domain registration system is not regulated like gTLDS (where
only a single entity is permitted to act as the operator of each gTLD registry),
trademark protection is required in order to protect the public from
encountering confusion in the blockchain registration process (in this case in
respect of the .crypto blockchain domains).
