Lawyer Trying To Trademark Bitcoin Explains His Legal Theory
from the mock-away dept
We just wrote about how lawyer Michael Pascazi was trying to file for a US trademark on “Bitcoin,” which most people agreed was laughable. Making it even more ridiculous was that his attempt to prove use in commerce was apparently to have his wife send a letter to a relative of hers offering to sell some Bitcoins. The whole thing was quite dubious, but Pascazi himself stopped by our comments to elaborate.
First, he claimed that “for strategic reasons,” he and his wife had abandoned the US trademark filing… but, at the same time, they’ve commenced trademark applications in other countries, which have a first to file rule, rather than a first to use:
Simultaneously therewith, trademark applications have begun in those civil law countries, wherein, “first to use” status is not recognized as a defense to trademark registration. These civil law countries, which account for most of the world’s population, and land mass, only recognize a “first to file” basis for trademark registration. The penalties for infringing trademarks in those civil law “first to file” countries are as severe as the common law jurisdictions, such as the USA, UK, Canada, Australia, etc., which utilize a “first to use” basis.
Therefore, jumping up and down exhorting that “Bitcoin” has been in use in the USA, or another common law country, since the dark ages is no defense, repeat no defense, to a claim of infringement of a properly registered mark in a “first to file” jurisdiction.
Pretty shameless. He’s basically admitting that he has no actual rights to Bitcoin, but he’s going to try to use the fact that many countries (especially the EU and India) have a first-to-file system, to take ownership of the word. Thankfully, another lawyer, John William Nelson, who actually is an expert in these areas (Pascazi is not), explained why Pascazi’s new, extra slimy, scheme probably won’t work either:
Mr. Pascazi does not really understand trademark law, it appears. While he is correct that many civil law countries have a first-to-file process, that does not mean they have no ability to challenge the issuance of the mark.
A trademark must be a source identifier. In other words, Mr. Pascazi’s ‘client’ must be recognized as the source of a product by consumers if the mark Bitcoin is used.
As for enforcing international marks in the U.S., this is not as easily done as Mr. Pascazi would hope. Especially if he is able to obtain a registration abroad on such shaky grounds. It could still be subject to the same cancellation process as a U.S. mark.
The question is whether Mr. Pascazi will truly try and enforce a foreign mark on foreign soil. Paying international lawyers is not cheap.
And will he continue to maintain the mark and defend it against attacks?
Mr. Pascazi’s client is over-reaching. I recommend Mr. Pascazi or his lawyer consult real trademark attorneys about this. They might receive more thorough advice.
So, there you have it.