Nike have applied to register ‘cryptokicks’, for the aim of consumers being able to use such currency to mine, earn and purchase their products. Tracy Lacey-Smith, Partner at SA Law advises on creating points of differentiation for cryptocurrency trademarking to be accepted
Cryptocurrency has taken the World by storm with some referring to it as “the future of money”. Although cryptocurrency can’t be used in the same manner as real-life currency at this moment, it is held as an investment in the hope that the value will continue to rise as it becomes increasingly popular. This is why it is often referred to as a “crypto-asset”, particularly by financial institutions. Cryptocurrency is recognised as its own individual financial market, with companies such as Facebook and Samsung announcing that they are developing their own forms of cryptocurrency to get involved in this market.
After seeing the success of “BITCOIN”, arguably the largest cryptocurrency provider, many have got involved in this revolutionary technology. However, between 2014 and 2018 the value of cryptocurrency has fluctuated nearly three times more than the pound, and nearly double the price of oil and therefore it can be a risky business venture.
This has not stopped companies getting involved. It has recently been published that Nike has also submitted a trademark for their own cryptocurrency, named “crypto kicks”. It is worth noting that this trademark is only being applied for in the U.S., assumingly because “crypto kicks” is a British online store selling “crypto-themed” merchandise. It appears from the filing that this trademark will be used in the near future and is to cover both the name of the currency and its use in Nike’s online community. The question has therefore arisen, how hard is it to trademark a currency?
Trademarks have to be distinctive
The general trademark procedure may seem simple in that (to put it extremely briefly) you check that the trademark is not already registered, you then make an application to the UK Intellectual Property Office, which involves it being published in the trade marks journal and waiting for any objections to be made to your application before, if all goes successful, you receive a certificate of registration.
However, the difficulty in registering any trademark is proving in your application that the trademark is “distinctive”. This means that it does not resemble another registered trademark and is not simply descriptive of the goods or services a company is providing. The UK Intellectual Property Office will consider, regardless of whether or not the trademark is in use prior to the application, how the trademark will be considered by your target market and whether it’d be differentiated from competitors’ products.
How Can a Currency be Distinctive?
Currency is difficult to trademark as it is a generic term which is not in itself distinct. Cryptocurrency is different in that it is provided by a company rather than a centralised government; however it is also difficult to trademark as it works as a medium of exchange rather than a good or a service. This is further complicated by the fact that cryptocurrency projects use an open source software making it even less distinct. However, in practice the name of the ‘coin’ is generally able to be trademarked, as can be seen in “RIPPLE”. Therefore, although you can trademark the name of the coin, trademarking cryptocurrency can be difficult considering the generic formula but is possible by a company adding its own personalisation.
“BITCOIN” is trademarked in the UK, but is not currently trademarked anywhere else in the World. When news broke that “BITCOIN” was a registered trademark it caused quite the controversy. “BITCOIN” is trademarked in the U.K. until 22 December 2027 (trademark number UK00003279106) although only in relation to (broadly) clothing and beverages. “BITCOIN” along with “BLOCKCHAIN” (the common name for the process used for cryptocurrency) are used so frequently used that many deem them to be generic and many have argued against the trademark of “BITCOIN” due to its frequent use. This example, even of a successful trademark, has shown that the market considers there to be severe issues that companies can encounter both during and after applying for a trademark due to the difficulty of being distinct in such a market.
Ensure cryptocurrency is original enough to trademark
Although it appears from the media that this market is dominated by the larger tech companies, the SME’s ability to innovate and be distinctive to a target market is where they can succeed in this niche environment. It is much easier said than done, however a trademark must be distinctive, not merely descriptive. Therefore, trademarks such as “BITCOIN 2” or “cryptocurrency forum” are unlikely to be approved and similar applications are often rejected.
As stated above, a trademark cannot resemble another already registered trademark and therefore the trademark should be registered as soon as possible with clear reasoning and evidence as to why it is distinct from the rest. So, if you want to trademark your cryptocurrency you have to answer a simple but important question; How do you stand out from the crowd?