Today, I would like to introduce a cryptocurrency industry trademark “GRAM”/”gram” dispute case between UK-based Telegram Messengers, Inc. (hereinafter, “Telegram”), and US-based blockchain company Lantah LLC (hereinafter, “Lantah”) which our firm undertook in 2019 and came to have a decision in our favor.
The Beginning of the Telegram vs Lantah Cryptocurrency Industry Trademark Dispute
In truth, we were flustered. Not only did the judges of the precedent case which involved the same parties in the United States rule against our client, but our team had to face a global conglomerate in the subject case which put a considerable burden on our shoulders. But despite everything, the PI IP Trademark Team and I successfully protected our client’s trademark rights beyond all expectations.
At the time our team was working with Lantah to register their cryptocurrency trademark, we found out that Telegram had filed an opposition against our client during the publication stage. Telegram alleged that Lantah filed the same trademark with Telegram’s trademark (GRAM) in bad faith; trying to get a free-ride on the well-known reputation of Telegram’s trademark and make unfair profits off of it. By addressing the timing of their first use of their trademark, the similarity between trademarks in dispute and the wrongful intention of filing a similar trademark by Lantah, Telegram officially announced the start of the trademark dispute.
In particular, Telegram argued that:
“Lantah’s unauthorized use in commerce of a service mark that is confusingly similar to Telegram Messenger’s GRAM mark has caused and is likely to continue to cause confusion or mistake, or to deceive consumers and potential consumers, the public, and the trade concerning an affiliation, connection, or association between Lantah and Telegram when there is no such affiliation, connection, or association.”
Although the chance of winning against Telegram seemed slim, our marketing team believed that even the slightest possibility means that there still is a chance. Therefore, we prepared a powerful counterpunch based on a meticulous analysis of the data and arguments presented by Telegram.
Did Telegram’s Trademark “GRAM” Achieve a Well-known State before Lantah Started Using their Trademark?
Telegram claimed that they have been using the “GRAM” trademark starting from December 22nd, 2017 and has gained its fame since then. However, Lantah had promoted their “gram” trademark as a cryptocurrency-related trademark from January 17th, 2017, which is much earlier than the date Telegram claimed.
With evidence proving that Lantah had prepared the use of the “gram” trademark long before the time that Telegram alleged that their trademark achieved a well-known state, we were able to refute their argument successfully. Moreover, we were able to strengthen our counterstatement even more by claiming that there was no solid evidence to substantiate their claim.
Is Lantah’s Trademark Confusingly Similar to Telegram’s Trademark in their Appearance, Name, and Concept?
Both Telegram’s and Lantah’s trademarks may seem similar at a first glance. In fact, Telegram alleged that both trademarks are very likely to be confused because both trademarks are being used in the cryptocurrency industry.
As a response to their above-mentioned claim, PI IP Trademark Team argued that the concept behind both trademarks is essentially different; Lantah’s trademark originated from a metric system, such as the wordings used to represent mass or weight, but Telegram’s mark was named merely after the latter part of the word “Telegram”.
Besides, the fact that the word “gram” is a common noun that is commonly used by the general public could substantiate our claim which says that the similarity between both trademarks is just a mere coincidence.
Did Lantah Try to Register a Pirate Mark and Gain Undeserved Advantage?
The main point that Telegram addressed was the “bad faith” in Lantah’s filing of trademark. According to Telegram’s arguments, Lantah’s intention of filing their trademark could be seen as Lantah trying to take a free-ride on Telegram’s fame. We struggled to find the evidence to successfully refute this claim and spent a long time trying to work our way. Despite such difficulties in the initial stage, we were able to turn the situation into an opportunity to bring the advantage to our side in the end.
As we were examining every single word in Telegram’s arguments carefully, we noticed a questionable point: Telegram only provided a press release about their victory in the precedent court case in the United States as the evidence, instead of citing the actual sentence from the U.S. District Court for the Northern District of California.
PI IP LAW Trademark Team considered this point to be very odd. Why didn’t they highlight the evidence which would substantiate their argument even stronger? As we started to wonder why, we immediately began to search and analyze the entire original text of the sentence of the U.S. Court. As a result, we found out that although the U.S. Court ruled in Telegram’s favor, they in fact had determined that there was no evidence that Lantah filed their mark in bad faith, thus Telegram’s argument about bad faith trademark filing was inconclusive.
Furthermore, the fact that Telegram did not claim that Lantah filed their trademark in bad faith in the opposition case in the European Union trial made us doubt whether Telegram had substantial reasoning and evidence in opposing the registration of Lantah’s trademark. This raised reasonable questions as to whether Telegram filed the opposition against Lantah just intending to interfere with our client’s decision to register their trademark.
Victory Earned by the Power of Logic, Analysis and Tenacity!
As a result, our trademark team could earn a decision in our favor by carefully analyzing each piece of evidence that seemed to be against us and preparing a strong argument based on such thorough analysis. Upon our victory, many people asked how we could successfully overturn the situation. The answer was simpler than everyone thought:
“Concrete logic, meticulous analysis of the evidence and tenacity to find even the slightest chance to refute the opponent’s argument.”
PI IP LAW Trademark Team always stays true to the basics; strong-willed determination to bring the best results for our customers together with in-depth analysis and strong logic.
We assure our clients that no matter who the opponent is, whether it be a global conglomerate or an industry leader who may seem overwhelming at first, they can rely on our dedication and strong work ethics to take full responsibility of successfully protecting their rights.
