by Alex Bornstein
On November 6, 2019, the Electric Coin Company (ECC) signed an agreement with the Zcash Foundation (“ZF” or “Foundation”) to donate the worldwide trademark rights for registered Zcash logos and word marks. This donation is subject to a number of ongoing enforcement and performance obligations that ZF must undertake and maintain in order to remain in compliance with the agreement. The obligations include:
“Foundation will have the right, at its own expense, to control the preparation, filing, prosecution, and maintenance of the trademark applications and registrations included in the Trademark Rights and the preparation, filing, prosecution, and maintenance of any new or additional U.S. and non-U.S. trademark applications and registrations for the Trademark Rights […] and agrees to take such actions as are necessary to […] maintain in good standing all trademark registrations”
In addition to the registration and enforcement requirements in the ECC/ZF agreement, ZF must also comply with trademark laws and regulations in fifteen countries/jurisdictions (including the European Union as one entity), with more likely to follow in the future. This is a significant undertaking by ZF as trademark related activities require both external and internal resources in order to ensure proper enforcement and maintenance of the registered marks.
Why is trademark enforcement important? In addition to ZF’s required actions under the ECC donation agreement and required actions under all registration jurisdictions, enforcement is important in order to:
- Identify official sources of information, reducing the likelihood of fraudulent or incorrect information.
- Identify official apps and services, reducing the likelihood of fraudulent activities.
- Protect the reputation of Zcash, its associated entities, and the Zcash community.
How does ZF monitor trademark usage and how is enforcement initiated? ZF utilizes a multi-faceted approach:
- We work with multiple trademark lawyers to inform and lead our worldwide registration and enforcement efforts. These efforts include monitoring trademark registrars worldwide to ensure we are disputing potential infringements as early in the registration or renewal processes as possible.
- We subscribe to multiple “watch services” that monitor apps, social media usernames, domain name registrations, and other online services. When a trademark violation is identified, we take immediate action to notify the offending party and resolve the violation.
One of our enforcement partners identifies Zcash trademark violations with a focus on social media and apps. Through only this one partner, since November 2021, we have flagged 793 incidents and we have successfully enforced 602 infringements, with 78 enforcements currently pending. In addition, we have 8 “major” incidents underway (which may include URLs, apps, social media, and/or trademark registrations) in cooperation with law firms in six countries.
Enforcement actions can be lengthy (and costly) processes with opportunities for both ZF and the alleged offender to respond and counter-respond multiple times prior to a final resolution.
ZF will include trademark action tracking statistics, beginning with the Q1 2023 report, to further increase transparency related to our trademark enforcement actions and progress.
What can you do to help keep current and future Zcash community members safe from scams and misinformation?
- Become familiar with ZF’s trademark policy.
- If you create, or have created, a project that requires trademark usage approval and you haven’t requested approval yet, please do so via this form.
- If you create, or have created, a project that does not require trademark usage approval (because it is informational or otherwise isn’t required by the policy), please ensure your project is clearly marked as an unofficial source to avoid confusion.
- Report suspected trademark violations via this form.
ZF appreciates your assistance and cooperation as we strive to keep the Zcash community informed, safe from scams and misinformation, and presenting a unified and clear message across all online platforms.