Federally Registered Trademark Symbol

Genericide: Trademarking “Blockchain”

Trademarks are an often overlooked topic that have a substantial impact on the viability and social well-being of blockchain communities.

In “Collective Trademarks for Blockchain Communities,” we discussed the NIFTY trademark incident that occurred in August 2018, and proposed how blockchain communities can prevent future incidents by by applying for federal registration of collective trademarks (membership or trade/servicemark).

In this article, we analyze two types of trademark-ineligible marks, generic marks and merely descriptive marks, because both arose during the NIFTY incident and are prevalent in the blockchain industry. Understanding these terms leads to greater certainty, fewer costs, and, hence, more resources for buidl-ing.

Additionally, we would like to suggest certain actions to blockchain communities that will help United States Patent and Trademark Office (USPTO) trademark examiners know when a community term should be considered generic or merely descriptive.

Big Thank You from charles adjovu and Ledgerback to Alex R for all your help on this article!

Contents

What is a Generic Mark?

How does a Trademark become Generic?

Examples of Generic Marks

Is a “Blockchain” trademark generic?

Generic Problems for Trademark Examiners

Recommendations

Author Credits

What is a Generic Mark?

In US trademark law, a mark (logomark, wordmark, soundmark, etc.) is generic when the relevant public associates a trademark as a general term for a good or service rather than a source indicator [21].

In legal terms, the test for genericness involves asking:

What is the genus of goods or services at issue, and Does the relevant public understand the designation primarily to refer to that genus of goods or services [1].

A generic mark is unprotectable as a trademark under the Lanham Act (Federal Trademark Act), 15 U.S.C. § 1051 et seq., because a mark is only trademark-eligible if consumers associate the mark with a particular source of goods [2].

By contrast, merely descriptive marks are marks which describe the qualities or characteristics of a good or service (e.g., if the mark was “sweet apple juice” for an apple juice product), and can be registered only if the registrant can show it has acquired secondary meaning (“become distinctive of applicant’s goods in commerce”) [2][3].

These marks can also be registered to the Supplemental Register, which affords many of the benefits of full registration except for a few litigation advantages. In such cases, a mark will have to acquire secondary meaning before registration on the Principal Register.

How does a Trademark become a Generic Mark?

A trademark can easily become generic if: (1) the relevant public uses the trademark to describe a general type of product (e.g., thermos, zipper, dumpster); and (2) the trademark generally starts being used as a noun instead of as an adjective [3][4].

When establishing a brand for your product or service you want your trademark to be an adjective describing your brand or service; ie: that cooler is a “Snowman” cooler, or that car is a “Ford” car.

The moment your brand becomes the generally used noun for the goods or services your mark is associated with, you are at risk of the mark becoming generic, or committing “genericide”.

When a registered trademark becomes generic, cancellation proceedings may be initiated under 15 U.S.C. § 1064.

Examples of Generic Marks

Three (3) prominent examples of generic marks that you have probably encountered before are zipper, thermos, and dumpster.

Zipper

Zipper

Zipper was originally a trademark, registered in 1925 by B.F. Goodrich “for overshoes with fasteners invented by Gideon Sundback” [5].

The word zip “was already around as a noun and a verb,” and eventually the Zipper trademark became part of the common lexicon, and there was nothing B.F. Goodrich could do about even when “the company sued to protect the trademark in 1930” (Though, the company did retain trademark rights to Zipper Boots) [5].

Escalator

Escalator was originally a trademark, registered by Otis Elevator Co. [5].

Eventually, the escalator trademark started to become part of the common lexicon for similar devices and officially became genericized when the USPTO noted that Otis itself “had used escalator as a generic descriptive term in its own patents” [5].

Thermos

Thermos is a vacuum flask that can keep liquids cold or hot for a considerable period of time [5][6].

Thermos became a generic mark in the United States after the German Thermos company, Thermos GmbH, “sold trademark rights to three independent companies in 1907, who then began producing it and selling it around the world” [5].

Eventually, Thermos became generic mark in the United States in 1963 when King-seeley Thermos Co. lost a trademark dispute against Aladdin Industries, Inc., that Thermos had not been genericized as a common term for containers that keep the contents hot or cold [5][7].

Is a“Blockchain” Trademark Generic

Now, concerning generic and merely descriptive marks in blockchain communities, what marks could qualify?

In our view (mostly charles adjovu (U_U)), marks that solely contain the word “blockchain” or “cryptocurrency” may be considered generic or merely descriptive because they are common descriptors of a good or service, and, are often used as nouns rather than as adjectives.

More often than not, a mark solely containing “blockchain” or “cryptocurrency” will face an uphill battle in receiving trademark registration, especially if trademark registration is sought for the class of “036 Financial Services.”

Blockchain

Now, how is the word “blockchain” often utilized as a term within the industry? Generally, blockchain is a common term for an append-only database, powered by a decentralized network of computers, who authenticate entries in the database without a trusted third party (blockchain could also be used to refer to directed acyclic graphs (DAGs) such as IOTA or Nano, though not recommended) [8][9].

When “blockchain” is used regarding a specific project, it is more often than not, used as a noun, rather than as an adjective.

For example, you will not hear anyone say “Blockchain Bitcoin” or “Blockchain Ethereum,” rather, you will always hear “Bitcoin Blockchain” or “Ethereum Blockchain.”

Blockchain has even become part of the common vernacular in society (though often as a buzzword), and is undisputedly the defining term for this emerging industry.

Considering the broad (but also specific) description of blockchain, are USPTO Trademark Examiners aware of how “blockchain” is used in the industry and and media?

To date, a high percentage of financial services companies trying to register marks with “Blockchain” in their title have been given Office Action Refusals for being “Merely Descriptive” under Section 2(e)(1) [10][11][12].

Marks with “Blockchain” and some other arbitrary element are being required to add disclaimers as to “Blockchain”, indicating that trademark examiners have begun to see this as a merely descriptive and potentially generic term within the class of “036 Financial Services” [13][14][15].

Cryptocurrency

In addition to analyzing the trademark-eligibility of “blockchain,” we should also consider how trademark examiners will deal with the term “cryptocurrency.”

Generally, cryptocurrency is a term that describes any digital asset created on a blockchain that is verified by cryptographic means.

[Editorial Note: Before proceeding, please note that conceptually and legally, “cryptocurrency” is one of the most fiercely-contested terms in the global blockchain industry. It is closely linked to terms like “virtual currency,” “crypto,” “digital token,” and the like. For instance, the need for clarity between these terms is so acute that the United States Congress is currently considering a Token Taxonomy Act to clarify the meaning of these new technologies, and the scope of potential regulatory intervention. Similar codification/clarification efforts are afoot globally.]