As Companies Employ Clever Crypto Options, Beware of Common Trademark Traps

While some companies have not yet jumped on the cryptocurrency bandwagon, others are rolling out processes to accept payment for goods via cryptocurrency. Some companies are also embracing cryptocurrency internally, in the form of employee benefits.

Earlier this year, BTCS, Inc., the blockchain technology company, announced that it will offer dividends payable in Bitcoin. This should come as no surprise, since the company was the first “pure play” U.S. publicly traded company focused on digital assets and blockchain when it went public in 2014. Continuing to lead the digital asset industry, it is now also the first Nasdaq-listed firm to offer shareholders the option to receive dividends in bitcoin.

Of course, for this cryptocurrency leader, it was not enough to be the first to offer the option of receiving dividends by bitcoin. In an attempt to harness the power of intellectually property, BTCS is calling their bitcoin dividend, “Bividend,” and has filed a trademark on what they hope to be a fanciful, or perhaps at least suggestive, mark.

BIVIDEND’s Trademark Blunder

The mark, which was filed on January 5, 2022, is used in connection with “Electronic transfer of virtual currencies; Financial consultation in the field of cryptocurrency; Financial services, namely, providing a virtual currency for use by members of an on-line community via a global computer network; Financial services, namely, providing electronic transfer of a virtual currency for use by members of an on-line community via a global computer network; Providing financial information in the field of cryptocurrency; Providing financial information services to shareholders and potential shareholders regarding cryptocurrency.” The evidence of use includes specimens that show an internal email shareholders receive, outlining the process to opt-in to receive your Bividend instead of the usual cash payout.

“To receive your Bitcoin dividend, please follow the steps outlined below. If you no longer wish to receive your Bividend, or fail to complete the necessary actions… you will automatically receive a cash dividend,” says the letter to shareholders. And then, in all bold letters, the letter reads: “You will receive the Bividend only if your shares are held on the books and records of Equity Stock Transfer, LLC…”

To the untrained eye, these statements are harmless. To the trained eye of a trademark expert, it is clear that BTCS is already falling victim to one of the oldest and worst trademark mistakes. If you refer to your mark as a noun the mark becomes generic and, therefore, loses the ability to signify source, which means it ceases to be a trademark. So, BTCS’ reference to “the Bividend” is a terrible mistake. The proper use, although clumsy, would be “the Bividend dividend”. Many readers will be familiar with the example of Johnson & Johnson always carefully referring to Bandaid® brand bandages to prevent this very problem.

Just the Beginning

In any event, other companies also see the value in adapting to what current and future generations of employees look for in a workplace. NYDIG, a leading bitcoin company, announced on February 1, 2022, the launch of its Bitcoin Savings Plan to let employees of leading companies get #PaidInBitcoin, which would allow the employee to convert a portion of their paycheck to bitcoin.

Crypto options are penetrating our daily lives in other ways. Marketplace giants such as Microsoft and Overstock have been accepting Bitcoin on their online stores since 2014, and Home Depot began accepting Bitcoin in stores in 2019. In March 2022, a town in Arizona started taking Paypal-held Bitcoin, Ether and Litecoin for water payments.

It will be interesting to watch how the adoption of cryptocurrency transactions evolves from being a status symbol to a mainstream, or even preferred, way of doing business. It will also be interesting to see if the businesses adopting clever slogans and filing trademark applications properly refer to their own marks, or whether they are allowed to go the way of once famous and now generic marks such as trampoline, escalator, kerosine and so many others.

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Author: spaxiax
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