Michael Pascazi, the lawyer who filed a trademark application for the use of the word “bitcoin” in commerce, wrote to clarify to Betabeat that he wasn’t “forced” to withdraw it, as our headline yesterday said. “In the world of business one has to choose his/her battles carefully,” Mr. Pascazi said in an email. “If some negative comments directed at me, clearly to serve the interests of others, was all that it took to get me to change my course of action; well then, I would not be much of a litigator. The negative comments only reinforced my belief that there are people out there that don’t want their ‘apple carts upset.’ And the saying ‘thou protesteth too much’ comes to mind. The USPTO application clearly hit a nerve, perhaps a ‘why didn’t I think of that’ nerve.”
He described the decision to pull the application as a strategy shift toward jurisdictions “where successful opposition would be virtually impossible.” That means the U.S., U.K., Canada and Australia and other countries where the standard for a trademark is “first to file” are off the table.
What’s in it for Mr. Pascazi? He’s doing a lot of work to research the trademark process in other countries, although the “Madrid protocol” which allows for trademarks filed in certain countries to be extended to certain other countries, makes it a bit easier.
“A registered trademark in a civil law country gives the holder of the mark the exclusive right to use the mark in commerce, for a prescribed period of time, usually ten years,” he said. “Anyone infringing upon the mark in those countries, where it is registered, would be subject to money damages, and an order to stop the infringing. Most infringements do not end this way. Rather a royalty agreement is negotiated as a settlement between the mark registrant, and the infringer.
“Moreover, an overseas mark infringer who has sufficient contacts here in the USA, by engaging in perhaps Bitcoin transactions with New Yorkers, places himself/herself at risk of being sued in a U.S. court of law, for injury to those Americans holding intellectual property rights overseas, such as registered trademarks.
“We shall see in due course what registrations are issued overseas, and how the whole world of crypto-currency worldwide evolves. Maybe it will go the way of the SONY Betamax or the way of The Face Book. Time will tell,” he said.