Bored Ape nonfungible token creator Yuga Labs Inc. is facing pushback on its attempt to register 10 different trademarks for the Bored Ape Yacht Club brand at 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 at the Trademark Trial and Appeal Board.
Cahen claimed that Yuga Labs relinquished its rights to the trademarks by providing 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 duped potential consumers into believing they were purchasing genuine Bored Apes. Ripps and Cahen have countered that their NFTs are protected speech that criticize racist dog whistles allegedly embedded in the 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 ape skull logo.
“The Trademark Office has preliminarily 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 at hand, his infringement of the Yuga intellectual property.”
Cahen’s opposition claimed 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 subject to a US Securities and Exchange Commission investigation over whether the company should have to follow securities disclosure rules.
Cahen also claimed that Yuga Labs doesn’t own and forfeited its rights to its various digital logo designs. Cahen said that Yuga Labs’ terms of sale grant owners of Bored Ape NFTs “all rights” associated with the digital image, which means the company can’t claim trademark rights in the images.
He also argued that Yuga Labs “donated” an NFT bearing the ape skull to a decentralized autonomous organization known as “ApeCoin” which came with “all rights and privileges of 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, opposition filed 2/9/23.