Lawyer Attempts To Trademark Bitcoin

An anonymous reader writes "A NY based lawyer has submitted an application to the US Patent and Trademark Office claiming first use of the term bitcoin on June 22nd, 2011. The evidence of first use in the form of a letter detailing his wife's offer to sell "bitcoin" for $17.50 on June 23rd. A pdf extolling the virtues of bitcoin has also been uploaded to his law firms webpage."

Comments

Punish Trolls

[jarich]

This beautifully illustrates why there should be some punishment for this type of behavior. He's obviously ignoring all prior art and forcing an already overloaded system to deal with this crap. Fine him.

Re:Punish Trolls

[Ice Tiger]

I guess he thought the wikipedia stub for Bitcoin created 8th March 2009 doesn't count as prior art or something.

Re:Punish Trolls

[Anonymous Coward]

Nice rant, but unfortunately your knowledge of intellectual property laws is about on par with the rest of slashdot. First, you can't trademark troll, since trademarks are only valid if in active use. Second, there's no such thing as prior art in trademark law. If Coca Cola went out of business tomorrow, and nobody bothered to buy up their trademark, it would be perfectly legal for me to start my own soda company called Coca Cola. Third, most of the fault here is Bitcoin's, as they should have registered the trademark themselves, or failing that, protected their trademark without registration.

Re:Punish Trolls

[erroneus]

"Prior art" is about patents. Trademarks have more to do with "common use" and in this case, I believe that can be easily demonstrated. Bitcoin is a "thing" not a brand and so it should not be eligible for trademark any more than "web browser" would be.

Re:Punish Trolls

[pacergh]

While the term 'prior art' is a patent term, there is something directly similar called prior use. So the argument is still valid, even if the terminology is not legally exact.

Re:Punish Trolls

[pacergh]

Registering a trademark isn't necessary. It's never been necessary. International laws have not changed trademarks like they have changed copyright.

Even a registered trademark can be restricted geographically. An example is Waffle House. Waffle House is a chain of diner-like restaurants in the Southeast US. It has a federal mark for 'Waffle House.' However, a chain of Waffle House restaurants geographically located in Indiana (or Illinois, can't remember exactly) had used the mark in that geographic location prior to Waffle House seeking the federal registration.

The result is that Waffle House cannot use the Waffle House name for its restaurants in Indiana because of the already-existing Waffle House restaurants. Instead, it goes by Waffle Steak.

Re:Punish Trolls

[v1]

Fine him? he's a lawyer. disbar him. He's obviously unfit to be legal council.

Re:Punish Trolls

[SplicerNYC]

Loss of license to practice law for life might be a way to dissuade the next person.

Re:Punish Trolls

[rbrausse]

no idea about the US but here(tm) in the EU trademarks are not registered exclusively for every usage but for one (or many...) classes according to the Nice Classification (stupid javascripty page, no idea how to deeplink to "Class Headings").

So it would probably impossible to register the generic term "Internet" as trademark for class 38 (telecommunication) or 9 (data processing equipment and computers), but until 2009 (the holder deleted the trademark) "Internet" was in Germany registered for class 39 (travel arrangement).

Re:Punish Trolls

[nugatory78]

When BK wanted to enter the Australian market, the name Burger King was already in use. They tried to everything possible to get ownership of the name but failed. The current owner was happy with his business and refused to sell. Eventually (I think it was ~2003), BK got rights to the name and started renaming every store BK. I used to work for Hungry Jacks in the late 90's. All the training material was BK branded, even the equipment was.

I hereby move to trademark the word "dollar"

[youn]

my first documented use of the word dollar being today when I said enthusiastically, "oh a dollar sign... how cool would that be if every one paid me a dollar every time they used the word dollar" ;)

Re:I hereby move to trademark the word "dollar"

[gilleain]

my first documented use of the word dollar being today when I said enthusiastically, "oh a dollar sign... how cool would that be if every one paid me a dollar every time they used the word dollar" ;)

Even better, every time they pay you, ask them "How much was that again?..." and they would reply "Oh, just a dollar..dammit!". You would be raking it in, so much so that you would have to construct some sort of special multi-rake machine to get it all.

Re:How did he even get through law school??

[Dunbal]

You don't get it. Bitcoin transactions are VIRTUALLY anonymous, not REALLY anonymous.

I have already applied for copyrights

[slackzilly]

For the following words and characters:

first
post
copyright
patent
plus
+
apple
troll
euro
.

I could apply for some more but I figure these will generate enough money for my needs. I am not greedy and selfish.

Publicity Stunt

[brainzach]

Instead of defending the trademark, the lawyer is promoting the virtues of Bitcoin. He is probably just trying to generate publicity to pump up the price of Bitcoins that his wife is selling. I doubt the lawyer is stupid enough to think he can be successful trademark Bitcoin.

Generacization

[DrYak]

The chief enemy of trademarks isn't "Prior Art" but becoming "Generic".

It doesn't absolutely matter who used what first (unlike prior art & patents).

What matters is :
- In the market where a the trademarked product is sold, does this name clearly identifies the product as a separate marketed entity ?
- Does the company owning the trademark actively work in order to avoid the term becoming generic.

The first is why, sometime, plain normal dictionary words are acceptable as a trademark. Because in that market the word clearly is the specific product. As an example : an apple is a fruit. But Apple, in the IT world, is clearly the maker of Mac and iProducts, that's why its trademarkable. Then, when it moved into the music sector, things started to get problematic, because the Apple name was also widely known for a music publishing company. On the other hand you can't name a media player "Player" and attempt to trademark it this way, because the word "Player" is already used to describe the whole category of this product. It's not specific.

(Also that explains why some words can be trademarked for lots of separate products by separate companies. There is a brand of diapers called "Unix". But the chance of making a confusion between an operating system and an accessory for babies).

In today situation, bitcoins can't be used for a product name, because in the specific domain where lawyer attempts to trademark the word (in the realm of virtual currency) the word "bitcoin" has been already in use to designate a virtual currency. He can't claim the name for his own product. (Or at least not alone. He can still try to market his shop "Mama Jess' all honest Bitcoin trade" - or something along this idea)

The second is why we very often see completely stupid suits happening now or then about trademarks. The owner has to be active preventing the word becoming generic. That's why Google is publishing explanation about how to correctly use this name. Otherwise there's a risk that people will start using as verb, and then use the verb to describe "searching on any search engine".

Now, if the lawyer start pretending that in fact, he's also been working on his very own virtual currency-based product, that he back then decided to call "bitcoin" and is only filing the trademark now :
Well, theorically, he could try filing the trademark so late (as said above, timeline isn't relevant), but the problem is that until now that he's filing it, he hasn't done anything to try to protect the trademark. Even if he genuinely wanted to call his product "bitcoin", it's too late because that word is now widely use to describe the virtual currency we all know about, not specifically the product that this lawyer has been trying to sell.