Trademark on "Bitcoin Wallet"

[JoelKatz]

There's a new US Trademark application for "BITCOIN WALLET" based on use starting last month. The term "Bitcoin wallet" has been used generically to describe wallet programs designed to hold and transfer Bitcoins.

Word Mark:  BITCOIN WALLET

Serial Number: 86185037

Filing Date: February 5, 2014

Goods and Services: IC 036. US 100 101 102. G & S: Cash management namely facilitating and tracking transfers of electronic cash equivalents; virtual currency exchange transaction services for transferable electronic cash equivalent units having specified cash value.

FIRST USE: 20140205.

FIRST USE IN COMMERCE: 20140205

APPLICANT: Bitcoin Wallet, LLC LIMITED LIABILITY COMPANY KENTUCKY P.O. Box 176247 Fort Mitchell KENTUCKY 41017

[1715157585]

1715157585

[1715157585]

1715157585

[odolvlobo]

Someone is wasting their money.

[deepceleron]

This needs to be bumped, has anyone filed opposition to this? The "first used in commerce" in the application is a blatant lie.
http://tmsearch.uspto.gov

Word Mark    BITCOIN WALLET
Goods and Services    IC 036. US 100 101 102. G & S: Cash management namely facilitating and tracking transfers of electronic cash equivalents; virtual currency exchange transaction services for transferable electronic cash equivalent units having specified cash value. FIRST USE: 20140205. FIRST USE IN COMMERCE: 20140205
Standard Characters Claimed    
Mark Drawing Code    (4) STANDARD CHARACTER MARK
Serial Number    86185037
Filing Date    February 5, 2014
Current Basis    1A
Original Filing Basis    1A
Owner    (APPLICANT) ELTTES LLC LIMITED LIABILITY COMPANY UNITED STATES 7500 RIALTO BLVD STE 100 AUSTIN TEXAS 78735
Assignment Recorded    ASSIGNMENT RECORDED
Attorney of Record    Adam Siddiqi
Type of Mark    SERVICE MARK
Register    PRINCIPAL
Live/Dead Indicator    LIVE

Doing further searching, the application record is here: http://tsdr.uspto.gov/#caseNumber=86185037&caseType=SERIAL_NO&searchType=documentSearch

the last status update was May 13, 2014:  A non-final Office action has been sent (issued) to the applicant. This is a letter from the examining attorney requiring additional information and/or making an initial refusal. The applicant must respond to this Office action. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page.

But then I see: AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP Jun. 18, 2014 and bitcoinwallet.com claims they have a trademark.

But finally I see a refusal of Trademark letter: http://tsdr.uspto.gov/documentviewer?caseId=sn86185037&docId=OOA20140513184102#docIndex=0&page=1

[wasserman99]

I don't think the term "bitcoin" wallet" is unique enough to be trademarked.

According to the US patient office, a trademark is:

What is a trademark?
A trademark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.

There would really not be any who to distinguish which company is providing a certain good/service if the term bitcoin wallet is used because so many companies/providers already have a bitcoin wallet service. Regardless if they are issued a patient (it looks like from above they have been denied), I doubt it would hold up in court (which is the important question). 

[odolvlobo]

I don't think the term "bitcoin" wallet" is unique enough to be trademarked.

It was rejected for exactly that reason:

Registration is refused because the applied-for mark merely describes a feature, characteristic, purpose or function of applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

[wasserman99]

I don't think the term "bitcoin" wallet" is unique enough to be trademarked.

It was rejected for exactly that reason:

Registration is refused because the applied-for mark merely describes a feature, characteristic, purpose or function of applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

There you to. The person trying to trademark this term was likely someone trying to "buy up" a bunch of bitcoin related trademarks in a way similar to how people are registering/buying a lot of bitcoin related domain names. The problem here is that trademarks work very differently then domain names.

[HELP.org]

If you search on "Bitcoin" using the trademark search (TESS)  you get all kinds of interesting things.  the ones with 2 numbers means it was approved and they have a TM.  "Live" or "dead" means the application is still active or has been terminated.

To challenge any of these you have to file that during the time it gets published wich is after the examiner gets done determining if it is eligible. 


1 86281174  BITCOIN JR. TSDR LIVE 
2 86225450  INSIDE BITCOINS TSDR LIVE 
3 86211636  BITCOIN FOR THE REST OF US TSDR LIVE 
4 86211607  BITCOIN BANK BITCOIN FOR THE REST OF US TSDR LIVE 
5 86263915  ART 4 BITCOIN TSDR LIVE 
6 86143136  BITCOIN WORLD TSDR LIVE 
7 86328216  CHICAGO BITCOIN EXCHANGE TSDR LIVE 
8 86305724  AMERICAN BITCOIN FINANCIAL EXCHANGE (ABFEX) TSDR LIVE 
9 86305686  AMERICAN BITCOIN EXCHANGE TSDR LIVE 
10 86305661  AMERICAN BITCOIN FUTURES EXCHANGE TSDR LIVE 
11 86346430  B BITCOIN NATION BRINGING BITCOINS TO THE MASSES TSDR LIVE 
12 86257164  PREPAID BITCOIN TSDR LIVE 
13 86221017  INSIDE BITCOINS TSDR LIVE 
14 86341745  BITCOIN ART SHOP THE BEAUTY OF BITCOIN TSDR LIVE 
15 86335658  BITCOIN TRUST OFFICER TSDR LIVE 
16 86323327  BITCOIN OF AMERICA TSDR LIVE 
17 86309544  BITCOIN PIZZA TSDR LIVE 
18 86292918  BITCOIN NATION, LLC TSDR LIVE 
19 86185037  BITCOIN WALLET TSDR LIVE 
20 86276930  BITCOIN REWARDS TSDR LIVE 
21 86189614  BITCOIN MINING TSDR LIVE 
22 86185765  THE BITCOIN MARKETPLACE TSDR LIVE 
23 86180343  BITCOIN.GURU TSDR LIVE 
24 86174124  BITCOIN MINING COMPUTER TSDR LIVE 
25 86170956  BITCOIN BELIEVERS TSDR LIVE 
26 86137536  BITCOIN BUBBLE TSDR LIVE 
27 86135516  BITCOIN TSDR LIVE 
28 86133297  BITCOIN ATM TSDR LIVE 
29 86131687  NYBCE TSDR LIVE 
30 86129043  BITCOIN.APP TSDR LIVE 
31 86128762  BITCOIN.SITE TSDR LIVE 
32 86128699  BITCOIN.HOTEL TSDR LIVE 
33 86128427  BITCOIN.WEB TSDR LIVE 
34 86128346  BITCOIN.SHOP TSDR LIVE 
35 86097068  BITCOIN TSDR LIVE 
36 86093640 4512947 AMERICAN BITCOIN TSDR LIVE 
37 86075129  BITCOIN INVESTMENT TRUST TSDR LIVE 
38 86012793 4501014 EASY BITCOIN TSDR LIVE 
39 85974859  WINKLEVOSS BITCOIN TRUST TSDR LIVE 
40 85934674  BIVALENT BITCOIN JEWELRY TSDR DEAD 
41 85888809  BITCOIN COMPUTER TSDR DEAD 
42 85887743  M-BITCOIN TSDR LIVE 
43 85887676  BITCOIN MOBILE MONEY TSDR LIVE 
44 85883441  BITCOIN TSDR DEAD 
45 85877951 4435599 MILLY BITCOIN TSDR LIVE 
46 85798479 4344544 BITCOIN MAGAZINE TSDR LIVE 
47 85405348  BITCOIN MERCHANT SOLUTIONS TSDR DEAD 
48 85405343  MERCHANT SOLUTIONS FOR THE BITCOIN CURRENCY TSDR DEAD 
49 85373341  BITCOIN APPLIANCE TSDR DEAD 
50 85353491  BITCOIN TSDR DEAD

[jbrnt]

I thought trademark has to be in logo form? Can someone register common words in text form?

[redsn0w]

Someone is wasting their money.

Yes ,  someone is wasting his time.. they are also pathetic . BITCOIN is free and it remain free for ever  .

[HELP.org]

I thought trademark has to be in logo form? Can someone register common words in text form?

There are different kinds of trademarks, some are just text and other are a design.  Some places get both and others just get the design logo because the plain text may not fit the requirements for a trademark.  So if you have some specific design for "Bitcoin Wallet" you might be able to get a trademark on that specific design but not the words themselves.

[SHA255]

I thought trademark has to be in logo form? Can someone register common words in text form?

There are different kinds of trademarks, some are just text and other are a design.  Some places get both and others just get the design logo because the plain text may not fit the requirements for a trademark.  So if you have some specific design for "Bitcoin Wallet" you might be able to get a trademark on that specific design but not the words themselves.

I would think this situation would be very rare. I really can't imagine that a picture with words it could be unique enough to qualify for a trademark.

[HELP.org]

I thought trademark has to be in logo form? Can someone register common words in text form?

There are different kinds of trademarks, some are just text and other are a design.  Some places get both and others just get the design logo because the plain text may not fit the requirements for a trademark.  So if you have some specific design for "Bitcoin Wallet" you might be able to get a trademark on that specific design but not the words themselves.

I would think this situation would be very rare. I really can't imagine that a picture with words it could be unique enough to qualify for a trademark.

Logos get trademarks all the time.

[needFREElunch]

I thought trademark has to be in logo form? Can someone register common words in text form?

There are different kinds of trademarks, some are just text and other are a design.  Some places get both and others just get the design logo because the plain text may not fit the requirements for a trademark.  So if you have some specific design for "Bitcoin Wallet" you might be able to get a trademark on that specific design but not the words themselves.

I would think this situation would be very rare. I really can't imagine that a picture with words it could be unique enough to qualify for a trademark.

Logos get trademarks all the time.

Logos get trademarked but the associated brand name generally gets trademarked along side it. For example "ford" is likely a trademark of Ford Motor company as is the ford logo.

Do you know of any logos that are trademarked, that contain the name of the brand, but the brand name is not trademarked? 

[HELP.org]

I thought trademark has to be in logo form? Can someone register common words in text form?

There are different kinds of trademarks, some are just text and other are a design.  Some places get both and others just get the design logo because the plain text may not fit the requirements for a trademark.  So if you have some specific design for "Bitcoin Wallet" you might be able to get a trademark on that specific design but not the words themselves.

I would think this situation would be very rare. I really can't imagine that a picture with words it could be unique enough to qualify for a trademark.

Logos get trademarks all the time.

Logos get trademarked but the associated brand name generally gets trademarked along side it. For example "ford" is likely a trademark of Ford Motor company as is the ford logo.

Do you know of any logos that are trademarked, that contain the name of the brand, but the brand name is not trademarked? 

I don't know how often it happens but I have seen it with common words/phrases that could not get a trademark unless it was part of some kind of logo.  Some companies try to use that to get domain names because they have some logo registered with a word in it and they try to dispute a domain name.

[needFREElunch]

I thought trademark has to be in logo form? Can someone register common words in text form?

There are different kinds of trademarks, some are just text and other are a design.  Some places get both and others just get the design logo because the plain text may not fit the requirements for a trademark.  So if you have some specific design for "Bitcoin Wallet" you might be able to get a trademark on that specific design but not the words themselves.

I would think this situation would be very rare. I really can't imagine that a picture with words it could be unique enough to qualify for a trademark.

Logos get trademarks all the time.

Logos get trademarked but the associated brand name generally gets trademarked along side it. For example "ford" is likely a trademark of Ford Motor company as is the ford logo.

Do you know of any logos that are trademarked, that contain the name of the brand, but the brand name is not trademarked? 

I don't know how often it happens but I have seen it with common words/phrases that could not get a trademark unless it was part of some kind of logo.  Some companies try to use that to get domain names because they have some logo registered with a word in it and they try to dispute a domain name.

I am personally drawing a blank when it comes to thinking of a logo that is made of a phrase but does not have the company name on it.

I do know that it is very difficult to get a domain because of trademark infringement. There was a case several (maybe 10+) years ago when someone who was unhappy with paypal created a website called "paypalsucks.com" (I do not have any knowledge of malware on the site but cannot guarantee that it does not), paypal sued and lost. Today the website is still up. It should go without saying that the site is basically a hate site that "hates" on paypal. 

[HELP.org]

a trademark is associated with goods or services so a company name is not necessarily a trademark unless it is used for branding.  Trademarks are often associated with products so companies may own hundreds of trademarks.  The Paypal sucks thing is allowed because he is talking about paypal, like the media, and is not selling a product/service that capitalizes upon the trademark.  So the people who are starting a payment service that are called something like "bitpal" or an auction site called something like "bitbay" should probably expect a call from a lawyer at some point.

[dankkk]

a trademark is associated with goods or services so a company name is not necessarily a trademark unless it is used for branding.  Trademarks are often associated with products so companies may own hundreds of trademarks.  The Paypal sucks thing is allowed because he is talking about paypal, like the media, and is not selling a product/service that capitalizes upon the trademark.  So the people who are starting a payment service that are called something like "bitpal" or an auction site called something like "bitbay" should probably expect a call from a lawyer at some point.

That is very interesting. I never knew that you could potentially infringe on a trademark by using a somewhat similar name and very similar business model.

I think that sites like bankofamericasucks and paypalsucks are allowed also because of first amendment issues. Even though these kinds of sites are profiting (they likely sell ads) they are encouraging a public discussion and providing a public forum to discuss problems with these (corporate citizens).

[SoiledDove]

This is not surprising. People scout for in-demand domain names, and now the frenzy has extended to trademarks. Thankfully the trademark system works in a more legally regulated manner. Someone's tried to trademark 'yoga' so why not 'bitcoin wallet' LOL.

[Gozie51]

Someone is wasting their money.

Yes ,  someone is wasting his time.. they are also pathetic . BITCOIN is free and it remain free for ever   .

I mean is a real waste of time. How can someone have a trade mark or claim a patent for bitcoin, like a product that is not controlled. This will then become impossible to regulate and monitored.

Bitcoin's rapid and potentially volatile growth has prompted headlines from major news outlets and interest from individuals all over the world who may not otherwise dabble in alternative forms of currency. Bitcoin values have soared in the last few weeks, with record highs. Of course, this means attackers want in on the action. Authorities have identified three Android apps disguised as bitcoin wallet apps, previously in the Google Play Store, those trick victims into sending bitcoin payments to attacker-specified bitcoin addresses. Google removed the apps immediately after Lookout notified the company. The apps collectively had up to 20,000 downloads at the time of removal.
We call this mobile malware family "PickBitPocket." All Lookout customers are protected from this threat. PickBitPocket apps pretend to be legitimate bitcoin wallets but instead are set up to trick victims into providing the attacker's bitcoin address instead of the seller's e.g. an individual is selling some goods or services and allows payment in bitcoin. The seller provides a bitcoin address to the buyer for the payment. If the seller is using a PickBitPocket wallet app, he will instead send the attacker's bitcoin address to the buyer, in effect routing the bitcoin payment to the attacker.Three apps removed from the Play Store.
This week cryptocurrency enthusiasts found out the name ‘Bitcoin’ had been trademarked using the Intellectual Property Office (IPO) in the UK on December 22, 2017. The news came as a shock to one merchant who was selling t-shirts on Etsy with the Bitcoin name and was told to stop his operations or be held liable in a court of law.

I just hope this is a direct write by you. If it is not, a link to source should be better to guide readers who like to do further research.