Bored Ape NFT trademark application is opposed by alleged infringer
The creator of Bored Ape non-fungible tokens, Yuga Labs Inc., is facing setbacks in its attempt to register 10 different trademarks for the Bored Ape Yacht Club brand with the US Patent and Trademark Office.
Jeremy Cahen, who is currently facing a trademark lawsuit from Yuga Labs over his alleged sale of copycat NFTs, filed a notice of opposition to the Bored Ape trademark applications on Thursday with the Trademark Trial and Appeal Board.
Cahen argued that Yuga Labs relinquished its rights to the trademarks by granting a broad intellectual property license to purchasers of the Bored Ape NFTs.
The opposition is the latest development in a long-running legal battle over Yuga Labs’ intellectual property rights. Yuga Labs sued Cahen and conceptual artist Ryder Ripps for trademark infringement last year in California federal court.
The company claimed that Ripps and Cahen created knock-off Bored Ape Yacht Club NFTs under the name “RR/BAYC”, which tricked potential consumers into thinking they were buying genuine Bored Apes. Ripps and Cahen have countered that their NFTs are protected speech criticizing racist dog whistles allegedly embedded in Bored Apes.
Cahen’s notice of opposition asks the PTO to cancel Yuga Labs’ registration applications, which cover variations of the “Bored Ape Yacht Club” name and monkey skull logo.
“The Trademark Office has provisionally approved Yuga Labs’ trademark applications for registration, and we look forward to their full approval in due course,” a Yuga Labs spokesperson said in a statement to Bloomberg Law. “Jeremy Cahen’s filing is just another attempt to distract from the real issue, his infringement of the Yuga intellectual property.”
Cahen’s opposition argued that Yuga Labs failed to show that it had a “bona fide intent to lawfully use” the trademarks in its applications because the Bored Ape NFTs should be classified as securities under federal law. It noted that Yuga Labs is the subject of a US Securities and Exchange Commission investigation into whether the company should follow securities disclosure rules.
Cahen also claimed that Yuga Labs does not own and has lost the rights to the various digital logo designs. Cahen said Yuga Labs’ terms of sale give owners of Bored Ape NFTs “all rights” associated with the digital image, meaning the company cannot claim trademark rights to the images.
He also argued that Yuga Labs “donated” an NFT bearing the monkey skull to a decentralized autonomous organization known as “ApeCoin” which came with “all rights and privileges to the logo’s intellectual property.”
Yuga Labs applied to register the 10 trademarks in 2021. The company has until March 21 to respond to Cahen’s opposition.
Meister & Steiner PLLC represents Cahen. Fenwick & West LLP represents Yuga Labs.
The case is Cahen v. Yuga Labs Inc., TTAB, 91283323, objection filed 2/9/23.
