Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1127371
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`Filing date:
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`04/15/2021
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`92076859
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`Party
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`Correspondence
`Address
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`Defendant
`CasperLabs, LLC
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`CASPERLABS, LLC
`1908 THOMES AVENUE
`CHEYENNE, WY 82001
`UNITED STATES
`Primary Email: varun@adaptive.holdings
`No phone number provided.
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Motion to Suspend for Civil Action
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`Gloria M. Steinberg
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`trademarks@hansantos.com
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`/Gloria M. Steinberg/
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`04/15/2021
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`CSP.TM0009US_Cancellation_CASPERLABS_Susp_final-compressed.pdf(630
`508 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`VLAD ZAMFIR
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`Petitioner,
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` v.
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`CASPERLABS, LLC
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` Registrant.
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`Cancellation No. 92076859
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`In re: Reg. No. 6,131,157
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`Mark: CASPERLABS
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`Issued: August 18, 2020
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`REGISTRANT’S MOTION TO SUSPEND PROCEEDING PENDING DISPOSITION OF
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`DISTRICT COURT ACTION
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`Pursuant to 37 C.F.R. § 2.117(a) and TBMP § 510.02(a), Registrant CasperLabs, LLC
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`(“Registrant”) hereby requests the Board to suspend the above-referenced proceeding (the
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`“Cancellation Proceeding”) pending final disposition of the civil action in the United States
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`District Court of the Southern District of California, namely, Vlad Zamfir v. CasperLabs, LLC,
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`Case No. 21cv474-TWR(AHG), filed on March 17, 2021 (“Civil Action”). A copy of the
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`complaint (“Complaint”) and the civil cover sheet are attached as Exhibit 1.
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`Registrant is the owner of the federal registration for the CASPERLABS mark in
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`Registration No. 6,131,157 (“Registration”), which registered on the Principal Register on August
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`18, 2020. A copy of the registration certificate is attached as Exhibit 2. On April 9, 2021, Petitioner
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`Vlad Zamfir (“Petitioner”) filed a Petition to Cancel. Registrant’s Answer to Petitioner’s Petition
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`to Cancel is due on May 19, 2021.
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`In his Complaint, Petitioner claims that Registrant’s use of the mark including the word
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`“Casper” that is the subject of the Registration is false designation of origin in violation of Section
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`43(a)(1)(A) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A), and constitutes unfair competition
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`under California law. Complaint ¶¶ 62, 69. In particular, Petitioner alleges in the Complaint of the
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`Civil Action that Registrant’s use in commerce of the mark including the word “Casper” is likely
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`to deceive consumers as to the origin, source, sponsorship, or affiliation of Registrant’s Proof-of-
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`Stake (PoS) blockchain network, and is likely to cause consumers to believe that Registrant’s PoS
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`blockchain network is sold, authorized, endorsed, or sponsored by Petitioner, or that Registrant is
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`affiliated with or sponsored by Petitioner. Id. ¶ 61.
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`The Complaint seeks damages and an injunction prohibiting Registrant from using the
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`mark and other marks including the word “Casper.” Petitioner also filed a motion for a temporary
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`restraining order and preliminary injunction, which the Court denied. The Court’s Order Denying
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`Plaintiff’s Motion for Temporary Restraining Order and Preliminary Injunction is attached as
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`Exhibit 3. The response to the Complaint is currently due on May 10, 2021.
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`The outcome of the Civil Action may have a bearing on or may be dispositive of this
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`Cancellation Proceeding. “It is the policy of the Board to suspend proceedings when the parties
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`are involved in a civil action which may be dispositive of or have bearing on the Board case…
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`Judicial economy lies in the suspension of Board proceedings because, inter alia, the Board has
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`limited jurisdiction involving the issue of registrability only; the Board’s decision is advisory to
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`the Court, while a U.S. District Court decision is binding on the parties before this administration
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`Board.” Black Box Corp. of Pa. & BB Techs., Inc. v. Better Box Communs. Ltd., 2002 TTAB
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`LEXIS 253 (TTAB 2002).
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`Generally, when the parties are involved in court proceedings concerning the same marks
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`and potentially similar issues, the “standard procedure” of the Board is to suspend its
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`administrative proceedings pending the outcome of the civil litigation. See New Orleans Louisiana
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`Saints LLC v. Who dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011) (quoting 6 McCarthy on
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`2
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`Trademarks and Unfair Competition § 32:47 (5th ed. Updated September 2017)). The civil action
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`need not even be dispositive of the Board proceeding to warrant suspension. Rather, it is sufficient
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`that the civil action has bearing on the issues before the Board to justify a suspension. Id.
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`Here, the Civil Action is inclusive of the same parties, the same or sufficiently related mark,
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`and the same related goods and services at issue in the Cancellation Proceeding. Petitioner filed
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`the Civil Action against Registrant. Registrant owns the trademark registration for the
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`CASPERLABS mark, which is the very mark that Petitioner is seeking to cancel in this
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`Cancellation Proceeding. Additionally, the CASPERLABS mark is sufficiently related to and
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`contains the word “Casper” in its entirety which Petitioner contends is infringing upon its rights in
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`the Civil Action.
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`Accordingly, the parties and the mark in the Cancellation Proceeding and the Civil Action
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`are the same or sufficiently related, such that the Civil Action may be dispositive of, or at least
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`may have a meaningful bearing upon, the issues before the Board. In addition, the issues before
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`the Board may also be at issue in the Civil Action. Petitioner’s false designation of origin claims
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`involve issues similar to or possibly bearing on those the Board will be deciding in the Cancellation
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`Proceeding.
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`Because the parties are the same in and the marks and issues in the Civil Action may be
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`similar and because the outcome may be dispositive or may at least impact the claims before the
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`Board, suspension of the Cancellation Proceeding pending the outcome of the Civil Action
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`between the parties is warranted.
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`3
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`For these reasons, Registrant submits that an order from the Board immediately suspending
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`all activity related to the Cancellation Proceeding is warranted. The same is respectfully requested.
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`Date: April 15, 2021
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`Respectfully submitted,
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`By: /s/ Gloria M. Steinberg
`Gloria M. Steinberg, Esq.
`Han Santos, PLLC
`500 Union Street, Suite 800
`Seattle, WA 98101
`P: (425) 786-9734
`F: (425) 374-0921
`gloria@hansantos.com
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`Counsel for Registrant
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`CERTIFICATE OF SERVICE IN ACCORDANCE WITH
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`TBMP § 113.03 AND 37 C.F.R. § 2.119
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`I hereby certify that a true and correct copy of the foregoing REGISTRANT’S MOTION
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`TO SUSPEND PROCEEDINGS PENDING DISPOSITION OF DISTRICT COURT ACTION
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`was served on the Petitioner’s counsel by forwarding said copy on April 15, 2021, via email to:
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`Date: April 15, 2021
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`Leo M. Loughlin
`Rothwell, Figg, Ernst & Manbeck, PC
`607 14th Street NW, Suite 800
`Washington, DC 20005
`P: (202) 783-6040
`lloughlin@rfem.com
`with a copy to PTO-TM-Email@rfem.com
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`By: /s/ Gloria M. Steinberg
`Gloria M. Steinberg, Esq.
`Han Santos, PLLC
`500 Union Street, Suite 800
`Seattle, WA 98101
`P: (425) 786-9734
`F: (425) 374-0921
`gloria@hansantos.com
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`Counsel for Registrant
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`5
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`Exhibit 1
`Exhibit 1
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`Complaint
`Complaint
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`Case 3:21-cv-00474-GPC-AHG Document 1 Filed 03/17/21 PageID.1 Page 1 of 20
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`ROTHWELL FIGG ERNST & MANBECK, P.C.
`Christopher Ott (CA Bar No. 235659)
`cott@rothwellfigg.com
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`(202) 783-6040
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`Attorneys for Plaintiff
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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF CALIFORNIA
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`VLAD ZAMFIR
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` Plaintiff,
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` v.
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`CASPERLABS, LLC,
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` Defendant.
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`'21CV474
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`GPC
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`AHG
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`Case No.
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`COMPLAINT FOR VIOLATION OF
`SECTION 43(A) OF THE LANHAM ACT,
`15 U.S.C. § 1125(a), FOR FALSE
`DESIGNATION OF ORIGIN
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`DEMAND FOR A JURY TRIAL
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`COMPLAINT
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`Case 3:21-cv-00474-GPC-AHG Document 1 Filed 03/17/21 PageID.2 Page 2 of 20
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`Plaintiff Vlad Zamfir (“Mr. Zamfir”), by and through the undersigned counsel,
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`files this Complaint and Demand for Jury Trial against Defendant, CasperLabs, LLC
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`(“CasperLabs” or “Defendant”), and hereby alleges as follows:
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`NATURE OF THE ACTION
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`1. Mr. Zamfir is a prominent researcher in the blockchain community and
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`developed a seminal correct-by-construction (“CBC”) proof-of-stake (“PoS”)
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`blockchain consensus protocol. Around March 2015, Mr. Zamfir adopted the name
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`“Casper” for his research and development of the PoS protocol. On November 2,
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`2017, Mr. Zamfir released a first draft version of the CBC Casper PoS protocol, and
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`by December 2018, Mr. Zamfir published the CBC Casper protocol 1.0 specification.
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`Accordingly, Mr. Zamfir is often credited as being the “Face of Casper.” In October
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`2019, CasperLabs released a specification for a PoS blockchain architecture based on
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`Mr. Zamfir’s original Casper CBC specification, which it called the “Highway”
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`protocol. This action arises primarily from CasperLabs’ recent activities, beginning
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`on or about August 2020, to instead use the name “Casper” to describe its PoS
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`protocol and for filing for federal registration of the CASPER mark. In addition,
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`CasperLabs is about to launch its “CSPR” public token sale on March 23, 2021.
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`2.
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`This is a civil action for false designation of origin under Section 43(a)
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`of the Lanham Act, 15 U.S.C. § 1125(a), and for the substantial and related claim of
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`unfair competition under the common law of California, all arising from the
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`Defendant’s improper use of the Casper name (and related terms “Casper network,”
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`“Casper protocol,” “Casper blockchain,” and “CSPR”) in connection with the
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`1
`COMPLAINT
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`Case 3:21-cv-00474-GPC-AHG Document 1 Filed 03/17/21 PageID.3 Page 3 of 20
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`marketing, advertising, promotion, offering for sale, and/or sale of Defendant’s PoS
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`blockchain network.
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`3.
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`Plaintiff’s claims are based on Defendant’s use in commerce of the
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`Casper name, despite having no right to do so, causing confusion in the market and
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`damage to Plaintiff.
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`4.
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`Plaintiff seeks monetary and injunctive relief, and further seeks
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`cancellation of U.S. Trademark Registration No. 6202402 and abandonment of
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`pending U.S. Trademark Application Serial No. 88603814.
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`5.
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`Plaintiff Vlad Zamfir is an individual, residing at 79 Hemlo Cres,
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`THE PARTIES
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`Ottawa, ON K2T1E1. Mr. Zamfir is a citizen of Canada.
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`6. Mr. Zamfir has been, and continues to be, an innovator and prominent
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`researcher in blockchain technology. He has conducted cutting edge research and
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`developed a novel proof-of-stake consensus protocol, enabling more secure peer-to-
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`peer networks and solving widely-recognized issues with malicious miners. Mr.
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`Zamfir has spent considerable time, effort, and money developing his PoS protocol
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`and sharing his research with the crypto community.
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`7.
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`Upon information and belief, Defendant CasperLabs is incorporated
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`under the laws of Wyoming, and has a principal place of business at 11440 West
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`Bernardo Court, Suite 300, San Diego, CA 92127.
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`8.
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`Upon information and belief, Defendant CasperLabs is engaged in the
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`development of blockchain technology and an open-sources proof-of-stake
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`blockchain network.
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`JURISDICTION AND VENUE
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`9.
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`This action arises under the trademark laws of the United States, Title 15
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`of the United States Code. This court has jurisdiction over this action pursuant to 15
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`2
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`COMPLAINT
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`Case 3:21-cv-00474-GPC-AHG Document 1 Filed 03/17/21 PageID.4 Page 4 of 20
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`U.S.C. § 1125, 28 U.S.C. §§ 1331 and 1338(a) and (b), and pursuant to the principles
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`of supplemental jurisdiction under 28 U.S.C. § 1367.
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`10. Venue is proper in this Court under 28 U.S.C. § 1391(b)(1), in that
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`Defendant resides in this district.
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`11. On information and belief, Defendant CasperLabs is subject to personal
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`jurisdiction in this district by virtue of its presence in this State, having its principal
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`place of business in this judicial district, having conducted business in this State,
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`having availed itself of the rights and benefits of California laws such that it should
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`reasonably anticipate being haled into court in this judicial district, having engaged in
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`systematic and continuous contacts with the State of California, and in particular
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`within this judicial district, and from the receipt of substantial revenue from activities
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`conducted in this state and in this judicial district.
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`FACTS
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`Blockchain Background
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`12.
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`In simple terms, a blockchain is a distributed protocol that stores
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`transactional records as a chain of “blocks.” Each block contains a cryptographic
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`fingerprint, called a hash, of the previous block, a timestamp, and other data. Once a
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`block is recorded to the chain, it cannot be altered retroactively without leaving
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`evidence of the alteration by breaking the hash chain.
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`13. Cryptocurrency protocols, like Bitcoin and Ethereum, leverage
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`blockchain technology to secure peer-to-peer networks without relying on any single
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`legal entity to own or administer the network.
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`14. Certain types of blockchain applications, such as those used for
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`cryptocurrency exchanges, rely on consensus protocols to validate the operation of
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`the applications. Historically, these blockchain-based cryptocurrencies have relied on
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`a “proof of work” (“PoW”) consensus mechanism to secure the network. PoW
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`requires that “miners” run computationally intensive cryptographic programs to show
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`3
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`COMPLAINT
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`Case 3:21-cv-00474-GPC-AHG Document 1 Filed 03/17/21 PageID.5 Page 5 of 20
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`that they are devoting a lot of computational power in order to produce a “winning
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`block,” which is basically a block with low enough odds of being mined. A
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`tremendous amount of electrical energy and microchip manufacturing has been
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`devoted to mining in order to secure PoW protocols, because miners earn
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`cryptocurrency in exchange for producing blocks. PoW protocols have been widely
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`criticized for their outsized consumption of computational and electrical energy.
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`Sustainability and workability of this consensus mechanism has been seriously
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`questioned by the industry and general public. Therefore, much of the technical
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`development in the blockchain industry has been devoted to the development of
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`alternative consensus mechanism.
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`15. This, an alternative to PoW, called “proof-of-stake” (“PoS”), has been
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`under research in the blockchain and cryptocurrency industry for over five years. It
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`promises to eliminate the computational waste inherent to PoW. PoS uses digital
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`resources as opposed to computational resources to create barriers to attacking the
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`blockchain network.
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`Mr. Zamfir’s Development of the Casper Protocol
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`16. Mr. Zamfir is a well-known and respected researcher of
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`cryptoeconomics and distributed systems. In particular, Mr. Zamfir is one of the two
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`lead researchers of Casper PoS blockchain protocols. The other lead researcher
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`associated with Casper is Vitalik Buterin, founder of Ethereum.
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`17. Blockchain technology is new and emergent, and consensus protocol
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`mechanisms for blockchain-based cryptocurrencies cover a novel area of technical
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`research. Therefore, only a few individuals are considered to be competent in this
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`nascent field. Mr. Zamfir is recognized as one of the lead researchers in the
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`blockchain industry. As someone with deep background and expertise in this field,
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`Mr. Zamfir considers it his duty to steward technical research and public education in
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`blockchain technology in a responsible manner.
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`4
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`COMPLAINT
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`Case 3:21-cv-00474-GPC-AHG Document 1 Filed 03/17/21 PageID.6 Page 6 of 20
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`18. Around 2014, Mr. Zamfir began researching and developing a new PoS
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`blockchain protocol design in conjunction with Vitalik Buterin and the Ethereum
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`Foundation, a non-profit organization dedicated to supporting the Ethereum open-
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`source blockchain platform through development, research, and education.
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`19. Around March 2015, Mr. Zamfir adopted the name “Casper” for his
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`research and development of a new PoS protocol, which was attempted parodied
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`adaptation of the name of an existing protocol at that time, referred to as GHOST, for
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`PoS with incentive mechanism design for oligopolistic markets.
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`20. The new PoS protocol design research conducted by Mr. Zamfir and
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`Vitalik made it clear that there was a need to create a formal specification for a
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`consensus protocol, and thus Mr. Zamfir and Vitalik began research into distributed
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`systems in two separate directions. Mr. Zamfir’s branch of this research became
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`known as “CBC Casper,” which refers to to correct-by-construction (“CBC”)
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`software design methodology. The branch of research conducted by Vitalik became
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`known as “Casper the Friendly Finality Gadget” (“FFG”). Mr. Zamfir and Vitalik
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`have been jointly conducting this research since 2015 in connection with the much-
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`anticipated, and much-publicized slated release of the Casper PoS protocol for the
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`Ethereum protocol mainnet. Vitalik’s branch of Casper research is now marketed
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`under the name “Ethereum 2.0.” Mr. Zamfir’s branch, CBC Casper, is currently
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`known and referred to throughout the industry and consuming public as “Casper.”
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`21. Mr. Zamfir has been conducting research and development under the
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`Casper name around the world, and in particularl, in the United States, continuously,
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`since at least as early as March 2015.
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`22. For example, from 2015 to present day, Mr. Zamfir has used and
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`continues to use the Casper name when communicating and advocating for the
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`adoption of his PoS blockchain research with technical professionals, investors, and
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`5
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`COMPLAINT
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`Case 3:21-cv-00474-GPC-AHG Document 1 Filed 03/17/21 PageID.7 Page 7 of 20
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`fellow researchers and developers within the Ethereum and blockchain communities
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`around the globe.
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`23. Mr. Zamfir uses the Casper name exclusively when communicating his
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`work to the wider public via Twitter, Github, and his personal blogs.
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`24. Mr. Zamfir’s Casper name is distinctive to both the consuming public
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`and his tradecraft.
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`25. Mr. Zamfir’s Casper name and his research on proof-of-stake protocols
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`offered thereunder have received significant coverage in various media, including at
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`least the following:
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`a. A 2017 Bloomberg piece (“And one man, Vlad Zamfir, has a plan to
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`fix it. This week, Bloomberg's Matthew Leising and Brad Stone
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`speak to Zamfir about his big dreams for Ethereum and how his
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`project (codenamed Casper) could pave the way for masses of
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`ordinary internet users to join in the craze.”) (emphasis added).
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`b. Recognition in a 2018 article in The New Yorker (“Zamfir is the lead
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`developer of one strand of Casper, an ongoing software upgrade
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`designed to make Ethereum scale better and work more securely.”)
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`(emphasis added).
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`c. He was named one of the 100 Most Influential People in Crypto,
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`2020 Edition, by CryptoWeekly for his work on proof-of-stake.
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`d. Blockchain community blogsite, Blockgeeks, has stated “Vlad Zamfir
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`is often credited as being the ‘Face of Casper.’” (emphasis added)
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`26. As a result of his work, the Casper name has come to signify the high
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`quality and singular nature of Mr. Zamfir’s research, development, and design of the
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`blockchain PoS consensus protocol designated by the Casper name. The Casper name
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`has acquired irreplaceable distinction, reputation, and goodwill.
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`COMPLAINT
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`Case 3:21-cv-00474-GPC-AHG Document 1 Filed 03/17/21 PageID.8 Page 8 of 20
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`Mr. Zamfir and CasperLabs
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`27. Around November or December of 2018, Mr. Zamfir was approached by
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`CasperLabs about collaborating on the research and development of a new
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`blockchain. The proposal centered on the adoption of a version of his CBC Casper
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`PoS protocol, which at that time was implemented as a fork of RChain (a “fork” is a
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`separate derivative software repository with independent administration), which he
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`was made to expect would honour RChain’s token holders with a genesis token
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`distributions.
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`28. As part of this proposed collaboration, Mr. Zamfir understood that he
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`would have two roles at CasperLabs: (1) as lead consensus protocol architect; and (2)
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`to serve on the governance committee and to speak with outside investors and present
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`the protocol. In return for his fulfillment of these roles and duties, CasperLabs
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`promised to financially sponsor much of his blockchain research on Casper.
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`29. On February 14, 2019, on behalf of himself and his company,
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`Coordination Technology, Ltd. (CoorTech), Mr. Zamfir entered into a Research
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`Agreement with CasperLabs, setting forth specific terms by which he would provide
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`research, analysis, and advice relating to CBC Casper to CasperLabs to integrate into
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`its proposed blockchain. The Research Agreement acknowledges that Mr. Zamfir is
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`“a highly recognized thought leader in the world-wide blockchain community with an
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`expertise in blockchain consensus protocols, sharding and governance,” and that he
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`had been and was “presently doing work related to a family of proof-of-stake
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`consensus protocols, known as ‘CBC Casper’ and Casper compliant composite
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`sharding.”
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`30. CasperLabs was also interested in using Mr. Zamfir’s name and image to
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`promote the collaboration, and in connection with CasperLabs’ business, products,
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`and services. On the same day, February 14, 2019, on behalf of his company
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`CoorTech, Mr. Zamfir entered into a Licensing Agreement with CasperLabs, Ltd.,
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`7
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`COMPLAINT
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`Case 3:21-cv-00474-GPC-AHG Document 1 Filed 03/17/21 PageID.9 Page 9 of 20
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`granting CasperLabs limited rights in the use of his name and image. As part of the
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`Licensing Agreement, CasperLabs agreed to provide fundraising services and to
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`source and close donations from third parties, free of charge, to fund Mr. Zamfir’s
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`work on CBC Casper.
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`31. Within just a few months of the start of their working engagement, it
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`became apparent to Mr. Zamfir that CasperLabs was acting in violation of the terms
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`of the contract. CasperLabs acted too much in leveraging his name and image in
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`branding their company and too little to fund the CBC Casper research agenda.
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`32. Specifically, Mr. Zamfir became concerned that CasperLabs was
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`misappropriating his name and falsely asserting affiliations with him in a manner that
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`was misleading CasperLabs’ investors and for the purpose of taking advantage of Mr.
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`Zamfir and his reputation.
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`33. Already in a strained relationship with CasperLabs, Mr. Zamfir decided
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`to end his relationship with CasperLabs after yet another press release was published
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`without his prior consent, and in light of the complete lack of fundraising actvitiy for
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`technical research for CBC Casper, putting Mr. Zamfir’s operation at risk.
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`34. On September 11, 2019, Mr. Zamfir sent notice to CasperLabs that
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`CoorTech was terminating both the Research Agreement and the License Agreement.
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`He terminated the License Agreement in October 2019. Per CasperLabs’ request, Mr.
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`Zamfir agreed to extend the Research Agreement until November 2, 2019 to buy time
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`for a negotiation and clarification of terms. But when that process proved to be
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`unfruitful, Mr. Zamfir did not extend the Research Agreement further.
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`35. Since terminating the License Agreement in October 2019 and the
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`Research Agreement in November 2019, Mr. Zamfir has not had any research or
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`business relationship with CasperLabs, its affiliated entities, nor has he worked on
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`any of CasperLabs’ products or services.
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`Case 3:21-cv-00474-GPC-AHG Document 1 Filed 03/17/21 PageID.10 Page 10 of 20
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`36. While Mr. Zamfir still maintains some beneficial ownership in
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`CasperLabs due to a lack of credible selling opportunities, he has no control of the
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`company or their actions.
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`37. There has been irreparable harm and damage to the Casper name and to
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`Mr. Zamfir’s and the broader blockchain research ecosystem due to CasperLabs’
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`misappropriation and misuse of the Casper name.
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`CasperLabs’ Misappropriation of the Casper Name
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`38. Throughout the duration of the collaboration, CasperLabs did not have a
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`name for its PoS protocol. CasperLabs had, on several occasions, asked for Mr.
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`Zamfir’s permission to use the name “Casper” for its protocol “mainnet” and token,
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`but Mr. Zamfir refused to give his consent.
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`39. Mr. Zamfir made clear to CasperLabs that the “Casper” name should not
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`be used to describe any of CasperLabs’ planned blockchain releases that were
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`developed as a result of the collaboration, but instead should be used technically to
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`refer only to his PoS consensus protocol research. For example, when Mr. Zamfir
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`objected to calling the token “Casper,” CasperLabs used “CLX” as a placeholder for
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`the name of the token (the “CL” for CasperLabs and the “X” for indicating an
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`exchange), with ongoing discussions about a new name.
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`40. On October 31, 2019, CasperLabs released a protocol specification,
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`which was initially conceptualized and developed during the course of the
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`collaboration and which is an extension of CBC Casper with a module for “liveness.”
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`Initially, when Mr. Zamfir was working with CasperLabs, the extension was called
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`Case 3:21-cv-00474-GPC-AHG Document 1 Filed 03/17/21 PageID.11 Page 11 of 20
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`“Highway Protocol.” CasperLabs later started calling this product “CasperLabs
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`Highway Protocol,” and then “Casper Highway Protocol.”
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`41. By August 2020, however, in anticipation of its upcoming network
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`launch and coin sale scheduled for March 23, 2021, CasperLabs began referring to its
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`blockchain protocol, and token in general, as “Casper.”
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`42. For instance, on August 31, 2020, CasperLabs’ website announced the
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`network launch and token sale, referring to its offering as “[t]he Casper public
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`network and token sale,” and referring to its blockchain network as simply “Casper.”
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`43. As the date of sale approaches, CasperLabs has only increased its efforts
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`at rebranding its project misappropriating the “Casper” name, either alone or in
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`combination with other terms, such as “Casper network,” “Casper protocol,” “Casper
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`Highway Protocol,” and “Casper blockchain” to advertise and promote its project.
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`44. For instance, on its homepage, casperlabs.io, CasperLabs currently
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`claims to “develop[] and maintain[] Casper,” and encourages website visitors to
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`“[m]eet Casper” through an introductory video or to “learn more about Casper” on it
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`developer page. In each instance, “Casper” is used in reference to its blockchain
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`product and service offerings.
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`45. As part of its strategic, wholesale rebranding in August 2020,
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`CasperLabs also developed a webpage designated to the network itself, using
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`“Casper” logos and the acronym “CSPR” to refer to the token coins which will soon
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`be offered for sale on the cryptocurrency platform. There have been numerous
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`instances of people confusing the upcoming launch with Mr. Zamfir, questioning
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`whether or not he is involved.
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`46.
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`In addition to using the Casper name in its marketing and advertising of
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`its blockchain technology without Mr. Zamfir’s consent, CasperLabs has gone several
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`steps further and improperly sought to obtain ownership of the trademark with a
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`registration of the mark CASPER in its own name, despite the fact that in the
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`10
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`COMPLAINT
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`Case 3:21-cv-00474-GPC-AHG Document 1 Filed 03/17/21 PageID.12 Page 12 of 20
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`industry, it is still used almost exclusively to refer to Mr. Zamfir’s PoS consensus
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`protocol research.
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`47. During the summer of 2019, Mr. Zamfir had several discussions with
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`CasperLabs concerning its use and registration of the CASPER mark. He was not
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`willing to compromise on his refusal to allow “Casper” to be used as a name for
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`CasperLabs’ blockchain network.
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`48.
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`In order to secure exclusive protection over the name Casper and to
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`preclude others from using the name, CasperLabs and Mr. Zamfir decided to seek
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`federal trademark registration on Mr. Zamfir’s behalf and assign that registration (or
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`registrations) to Mr. Zamfir’s company CoorTech. CasperLabs therefore agreed to
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`register the trademarks, and agreed that they would then transfer those trademarks to
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`Mr. Zamfir.
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`49. On September 4, 2019, CasperLabs, LLC filed U.S. Trademark
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`Application Serial No. 88/979132 in its own name for the trademark CASPER in
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`connection with “Technological consulting in the field of cryptocurrency; Design and
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`development of computer software for decentralized computing using blockchain
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`technology; Providing on-line non-downloadable comput