IP Law Daily, TRADEMARK—TTAB: Entertainment business innovator failed to show use of FAN mark for cryptocurrency exchange services, (Apr 2, 2025)

By Cheryl Beise, J.D.

The applicant’s specimens only showed use of the FAN mark for a type of cryptocurrency, or utility token.

A trademark examining attorney properly refused to register the proposed mark FAN on the ground that the applicant failed to provide a specimen showing use of the mark in connection with the applied-for services, the Trademark Trial and Appeal Board has ruled. The specimens showed use of the mark FAN for a type of cryptocurrency, or utility token, but not for cryptocurrency exchange services. Consumers would believe the exchange services were provided by a third-party website operator (In re Global Creativity Holdings, No. 97112986 (T.T.A.B. Mar. 20, 2025)).

Applicant Global Creativity Holdings sought registration on the Principal Register of the standard character mark FAN for “Cryptocurrency exchange services featuring blockchain technology,” in International Class 36. The trademark examining attorney refused registration under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127, on the ground that the specimens of record were unacceptable because they failed to show the applied-for mark in use in commerce in connection with the identified services. The applicant appealed.

Evidence. The Board first sustained the examining attorney’s objection to the admission of certain evidence of its trial brief that included certain screenshots and embedded website links. The applicant argued that the objected-to materials “should be considered CLARIFICATION EVIDENCE which aims to explain or interpret existing evidence that might be unclear or ambiguous.” However, providing only hyperlinks does not properly make the corresponding Internet materials of record and the applicant did not cite any exception to Trademark Rule 2.142(d) to support its argument. The Board excluded the evidence, except for a screenshot of dictionary definition of the of the word “swap.”

Specimens of use for services. Section 1(d)(1) of the Act requires applicants to file a “specimen[] or facsimile[] of the mark as used in commerce[.]” Trademark Rule 2.56(b)(2) provides further guidance regarding the acceptability of service marks, stating that it “must show the mark as used in the sale of the services, including use in the performance or rendering of the services, or in the advertising of the services.” 37 C.F.R. § 2.56(b)(2). Section 45 of the Act provides that “a mark shall be deemed to be in use in commerce... on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce... and the person rendering the services is engaged in commerce in connection with the services.”

Applicant’s specimens. The Board noted that it reviewed the original and four substitute specimens, considering them individually and jointly in their entirety for purposes of acceptability in terms of showing use in commerce of the FAN mark in connection with the “cryptocurrency exchange services featuring blockchain technology” identified in the application. Each specimen comprised several pages.

The applicant describes its business as “an innovative entertainment company whose mission is to provide financial support and resources to small filmmakers and music creators who aspire to bring their work to the Hollywood stage.” The applicant operates a website platform, https://app.film.io/, or “Film.io”, whereby “fans can influence the types of films that get made and participate actively in the creation process, also participating in the financial success of the projects they support.” The platform, “allows users who invest in projects to acquire FAN tokens, which grant them a stake in the studio.”

The applicant claimed that it uses its FAN mark to refer to a cryptocurrency minted by the applicant, which enables users to cast their votes supporting specific projects in the platform, but also to refer to the “cryptocurrency exchange services featuring blockchain technology” that the applicant provides. The applicant emphasized its fourth substitute specimen.

The examining attorney did not dispute that the applicant’s FAN mark may be referring to a type of cryptocurrency, or utility token. However, the examining attorney argued that the specimens did not show use of the FAN mark in connection with providing a cryptocurrency exchange service.

The Board agreed with the examining attorney. Regarding the applicant’s fourth substitute specimen, the Board observed that while the specimen clearly indicates that a user has the ability to exchange or “swap” FAN cryptocurrency with MATIC cryptocurrency, “there is no indication that the applicant is providing this service, let alone that FAN is being used to identify the source of that service.” Rather, the exchange services offered on this website (www.dexscreener.com) appeared to be provided under the mark DEXSCREENER. Accordingly, a consumer would believe that it is DEXSCREENER, or dexscreener.com, that is the source or provider of the exchange services allowing the cryptocurrencies to be swapped or exchanged. Like the fourth specimen, the other specimens showed use of FAN in connection with reference to a cryptocurrency, but failed to properly show use that mark for the cryptocurrency exchange services.

The Board affirmed the registration refusal.

The case is Serial No. 97112986.

Judge: Wellington, T.

Attorneys: Mariana Paula Noli (Noli IP Solutions PC) for Global Creativity Holdings. Cayla Keenan for USPTO.

Companies: Global Creativity Holdings

Cases: Trademark TechnologyInternet USPTO