As the cryptocurrency and blockchain ecosystem continues its rapid evolution, intellectual property protection has emerged as a critical battleground for digital innovators, traditional financial institutions, and emerging crypto enterprises alike. Among the intellectual property issues in this field, the convergence of traditional financial services with revolutionary blockchain technologies sometimes under a single brand has created a complex trademark landscape fraught with unique challenges and unprecedented legal considerations.

In this comprehensive Q&A, we explore these intricate trademark dynamics with Matthew D. Asbell, a partner and leading member of the intellectual property team at Lippes Mathias LLP. Recently recognized as an "IP Star" in the 2025 edition of Managing IP's prestigious IP Stars guide and featured as a thought leader in blockchain intellectual property on the popular podcast "IP Protections on Blockchain," Matthew brings a wealth of intellectual property expertise to the intersection of traditional IP law and emerging cryptocurrency technologies.

With extensive knowledge and background in information technology, entertainment, medicine, and a range of other fields, Matthew’s passion for intellectual property work arises from a deep appreciation for creativity, whether in the form of invention, design, expression, or branding and marketing.

Apart from assisting his diverse and extensive clientele, including in the fintech and cryptocurrency fields, Matthew serves as an adjunct professor of law and frequent guest lecturer at Fordham University and The Benjamin N. Cardozo School of Law (Yeshiva University), has taught at Columbia University and the Instituto Superior de Derecho y Economia (ISDE) in Madrid, Spain, and has lead committees of and spoken before the American Bar Association, the International Trademark Association, the Law Society of Ontario, and more. As the host of INTANGIFY, a regular podcast on the intangible aspects of business, Matthew explores the practical aspects of what drives business success as well as the complexities of intellectual property, while also co-chairing the intellectual property alumni practice group of Cardozo Law and running the Steadfast group, an international network of intellectual property practitioners.

In the following discussion, Matthew shares his hard-earned insights from years of navigating trademark clearance challenges for crypto-focused businesses, addressing the complex overlaps between traditional financial services and blockchain companies, and developing comprehensive brand protection strategies that can scale across the diverse and rapidly evolving cryptocurrency landscape.

1. Trademark Clearance Challenges in the Crypto Ecosystem: Given your recent work on "IP Protections on Blockchain" and experience with trademark clearance for crypto services, what are the unique challenges you encounter when conducting trademark searches for crypto-focused businesses? How do you navigate the overlapping terminology between traditional financial services and blockchain/crypto companies during the clearance process?

Much like in the realm of fonts and typefaces, where the general consuming public do not necessarily see a distinction between the software and its appearance or function. cryptocurrency and fiat currency are ofter misperceived as being somewhat interchangeable.  So, when we are attempting to clear a trademark for the launch of a brand, we have to search somewhat broadly to cover not only downloadable software or tokens or digital or virtual currency, but also printed financial notes, financial services, software services and authentication, fraud-protection and other security services.  Moreover, the descriptions used in many trademark registrations and applications are inconsistent and vary in their breadth, not often making clear whether the owner uses its trademark in relation to cryptocurrency, fiat currency or both. As such, when we identify a similar third party trademark, we often have to research the owner more closely and carefully to evaluate whether it is directly competitive such that the owner may raise an objection or may not support our efforts, if needed, to overcome a refusal by the trademark office.  To properly clear a trademark, we need to understand the proposed applicant’s actual or intended use, including whether it is limited to fiat or crypto, and compare that to the third party references disclosed, and the inconsistent and overlapping terminology can indeed make it challenging to do so.

2. Fiat vs. Crypto Financial Services Brand Conflicts: You mentioned handling cases where two parties with the same name provide financial services - one fiat-focused, the other crypto-focused. How do you assess likelihood of confusion when traditional financial institutions and crypto companies operate under similar marks? What factors do courts and the USPTO consider when determining whether these services are related enough to create trademark conflicts?

The factors focused on by an examining attorney in the United States Patent and Trademark Office (USPTO) are usually substantially more limited than those focused on by the administrative law judges in the USPTO’s Trademark Trial and Appeal Board (TTAB) or the judges in the courts.  Moreover, because currencies are often used internationally, we have to take into account how confusion is evaluated by the IP offices and courts outside of the United States as well.  The USPTO examining attorney may limit their focus primarily to the similarities between the marks and the similarities or relatedness of the goods and services as they are described in the registration and application.  They may simply pull examples of other registered marks that cover both fiat and cryptocurrency goods and services to try to justify a simplistic view that the goods or services are related.  They may also oversimplify things by relying on dictionary definitions or other bases for interpreting the description of goods and services a particular way.  Another country’s IP office may limit its focus even more narrowly to whether the goods or service fall in the same class or category, or in some instances, sub-class or sub-category.  The TTAB and courts will take into account numerous other factors, including the nature and level of sophistication of the consumers and the channels of trade in which the goods or services are provided, if such differences are asserted.  These can be significantly different between entities that purely provide crypto goods or services and those that deal in fiat currency exclusively.  So, we can really only evaluate the likelihood of confusion in each different context, and in the end, as lawyers like to say, it depends and reasonable minds can differ.  We really cannot make a generalization about how to ensure that a crypto company’s mark will not encounter or will easily overcome a refusal or objection based on that of a traditional financial institution.  That said, ensuring that a client picks a distinctive mark that does not merely use additional terms to directly inform consumers of particular details of the goods or services being offered can be a key way to stay separate from the rights of prior third party owners.

3. Multi-Crypto Brand Protection Strategy: With your experience clearing trademarks “for use with crypto against prior owners of marks for different types of crypto,” how should crypto projects approach comprehensive brand protection across the diverse cryptocurrency landscape? What guidance do you provide clients about securing trademark rights that can scale across different blockchain protocols, tokens, and crypto services?

The trick here is really to anticipate as best as possible the directions in which the business may likely want or need to go, but also, where possible, to apply to register trademarks both broadly and narrowly so that our client’s have room to grow and an ability to enforce against third parties using a similar mark for other types of crypto, but also so third parties are less able to challenge our client’s registrations and they are better informed about what core areas of which they should definitely steer clear.  Clients need to educate their IP lawyers as to the specifics of what they do or plan to do and as to other parties they believe to be the key competitors.

Crypto is not a “real” or official type of currency at all, but rather essentially just a bit of code tracked on a blockchain.  However, it is exchangeable with and serves the same function as money, and is recognized as such by the general public, even though it lacks the same governmental support and regulatory structure behind traditional currency.  Protecting a brand associated with crypto-based goods or services has the added complexity of ensuring there is not a similar brand for traditional financial goods or services, differentiating it from other providers, and securing an appropriate scope of rights under the brand.

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