Intercontinental Exchange Holdings, Inc. (ICE) is suing ICE Labs Limited for alleged trademark infringement.
The complaint, seen by FX News Group, was filed on June 20, 2024, in the Northern District Court of Georgia.
ICE brought this action for trademark infringement (15 USC § 1114) and unfair competition under the Lanham Act (15 USC§ 1125(a)), a violation of the Georgia Uniform Deceptive Trade Practices Act (OCGA § 10-1- 370, et seq.), and the common law unfair competition to protect the confidence and goodwill created in the “ICE” marks based on ICE Labs’ similar use of the term “ICE” to identify own technology platform and cryptocurrency platform.
Intercontinental Exchange claims that ICE Labs’ conduct leaves ICE no choice but to bring a legal claim to compel ICE Labs to use the “ICE” mark and to receive damages, attorneys’ fees and costs of the suit.
Intercontinental Exchange Holdings, Inc. is a Delaware corporation headquartered at 5660 New Northside Drive, Atlanta, Georgia 30328.
ICE Labs Limited has been incorporated in the British Virgin Islands since 12 December 2022. The registered address for ICE Labs Limited is through the registered agent of Asia Leading Corporate Services (BVI) Limited at Road Town, Tortola VG1110.
In recent years, ICE has expanded its activities into cryptocurrency products and services. For example, in 2018, ICE launched a digital asset and cryptocurrency marketplace called Bakkt. The market understands that ICE was in control of or connected to Bakkt at the time of its launch and this created an association between ICE and cryptocurrency-related services. ICE remains the largest owner of Bakkt.
In 2018, ICE launched a Cryptocurrency Data Feed in partnership with Blockstream, a leader in blockchain technologies and financial cryptography, to offer real-time cryptocurrency information and data for over 100 cryptocurrencies. ICE provides valuable price discovery information for specially curated and trusted cryptocurrencies in the market.
ICE offers all its goods and services under the “ICE” brand and its variations, which it has spent decades developing as a trusted source of technology, data and financial assets.
ICE holds a number of United States trademark registrations for ICE and ICE-formative marks, all of which are legally and validly registered in the United States Patent and Trademark Office.
In addition to ICE’s launch of Bakkt and cryptocurrency-related data services, ICE intends to provide further cryptocurrency-related products and services in the future. ICE’s bona fide and bona fide intent to do so is evidenced through its ownership of a series of intent-to-use applications with the USPTO for the use of “ICE” in connection with cryptocurrency goods and services, which gives ICE priority over potential competitors such as ICE Labs.
Notwithstanding ICE’s longstanding rights to the mark “ICE” in connection with financial products and services, ICE Labs has adopted and uses the same term “ICE” and the similar term “ICE OPEN NETWORK” in connection with similar financial services and technologies that cause confusion including a digital currency and blockchain initiative to decentralize privacy and digital ownership.
Upon information and belief, in or about 2023, ICE Labs adopted and used the ICE trademark and ICE formation marks.
In February 2023, ICE Labs released its ICE-branded mobile software application to consumers in the United States on at least the Google Play Store and also the Apple App Store.
In September 2023, ICE Labs released its white paper detailing several of its blockchain-related products and services, including cryptographic services. Now, ICE Labs advertises its goods and services, including in the field of financial services and cryptocurrencies, on the website www.ice.io.
ICE Labs offers a cryptocurrency token or coin called ICE COIN. ICE COINS are used as a medium of exchange to facilitate financial transactions on the ICE Labs network, including exchanging Ice for other cryptocurrencies (i.e., open market transactions).
ICE COINS are currently traded on multiple financial cryptocurrency exchanges, networks or blockchains, including HTX (Huobi) Exchange, Biconomy Exchange, Tokero Exchange, Arbitrum network, Solera blockchain, BitMart and many other platforms.
ICE Labs released public announcements about listing on these exchanges that contain statements such as “don’t miss this exciting opportunity to trade Ice on Biconomy and be part of our growing community” and “this strategic listing on HTX…… usher[s] into a new era of opportunity for ice owners and merchants alike.”
ICE Labs also uses “ICE” in connection with a mobile application that provides a digital wallet, cryptocurrency mining capabilities, and social media aspects (such as inviting friends).
ICE first contacted ICE Labs in January 2024 to request that ICE Labs cease its unauthorized and confusing use of the “ICE” mark. In response, ICE Labs made some minor changes to its website. For example, it added an inconspicuous disclaimer at the bottom of its website in small font.
However, the disclaimer does not appear in ICE Labs’ “Whitepaper” explaining its cryptocurrency services, and it does not appear on the trading platforms on which ICE COIN is traded in the financial markets.
ICE says it is being forced to bring this lawsuit because ICE Labs has refused to stop or curtail infringement of the “ICE” trademark and infringement of ICE’s protected goods and services.
Intercontinental Exchange contends that ICE Labs’ actions have caused ICE monetary damages in an amount to be determined at trial, and that they have continued to impair ICE’s goodwill, which cannot be adequately compensated by monetary damages alone, and that such damages will continue and harm ICE unless and until ICE Labs is permanently registered.
ICE intends that ICE Labs and their officers, directors, affiliates, employees, successors be permanently enjoined and restrained from:
- Use of the “ICE” name, including in connection with the ICE Open Network or any logo or stylization in any manner in connection with the sale, offer for sale, distribution or advertising of any goods or services that are not genuine ICE goods or services or not authorized by ICE.
- Use any mark or domain name that or otherwise take any action that is likely to cause confusion or the erroneous belief that ICE Labs may in any way be connected, connected or associated with ICE or its goods and services.
ICE is also seeking a court order requiring the transfer of ICE Labs’ domain name www.ice.io to ICE.
Intercontinental Exchange is also seeking an injunction requiring ICE Labs to delete, disable and destroy all materials depicting the ICE name and trademark and all similar designations, including on all websites, digital assets (including cryptocurrency tokens), applications, social media and other materials.
In addition, ICE seeks monetary relief in an amount to be proven at trial, including ICE Labs’ profits, all damages suffered by ICE as a result of ICE Labs’ conduct (and that all damages are trebled due to ICE’s extraordinary conduct Labs), reasonable attorneys’ fees and costs of suit.
ICE is also seeking punitive damages in an amount to be determined at trial.