Intercontinental Exchange takes ICE Labs to Court for trademark infringement

Intercontinental Exchange Holdings, Inc. (ICE) is suing ICE Labs Limited for alleged trademark infringement.

The relevant complaint, seen by FX News Group, was submitted on June 20, 2024, at the Georgia Northern District Court.

ICE has brought this suit for trademark infringement (15 U.S.C. § 1114) and unfair competition under the Lanham Act (15 U.S.C.§ 1125(a)), violation of Georgia’s Uniform Deceptive Trade Practice Act (O.C.G.A. § 10-1-370, et seq.), and common law unfair competition to protect the trust and goodwill generated in the “ICE” marks based on ICE Labs’ confusingly similar use of the term “ICE” to identify its own technology platform and cryptocurrency platform.

Intercontinental Exchange claims that the conduct by ICE Labs leaves ICE no choice but to bring a legal claim to enjoin ICE Labs from using the mark “ICE” and to obtain damages, attorneys’ fees and costs of the action.

Intercontinental Exchange Holdings, Inc. is a Delaware corporation headquartered at 5660 New Northside Drive, Atlanta, Georgia 30328.

ICE Labs Limited is incorporated in British Virgin Islands as of December 12, 2022. The registered address for ICE Labs Limited is through its registered agent Asia Leading Corporate Services (BVI) Limited at Road Town, Tortola VG1110.

In recent years, ICE has expanded its business 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 affiliated with 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 collaboration with Blockstream, a leader in blockchain technologies and financial cryptography, to offer real-time cryptocurrency information and data on more than 100 cryptocurrencies. ICE provides valued price discovery information about specifically curated and trusted cryptocurrencies to the market.

ICE offers all of its good and services under the “ICE” brand, and variations thereof, which it has spent decades developing as a trusted source for technology, data, and financial assets.

ICE owns a number of United States Trademark Registrations for ICE and ICE-formative marks, all of which are legally and validly registered on with the United States Patent and Trademark Office.

In addition to ICE’s launch of Bakkt and its cryptocurrency-related data services, ICE intends to provide further cryptocurrency-related products and services in the future. ICE’s bona fide and good faith intent to do so is demonstrated through its ownership of a number 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 like ICE Labs.

Despite ICE’s long-standing rights in the “ICE” mark in connection with financial products and services, ICE Labs adopted and uses the identical term “ICE” and the confusingly similar term “ICE OPEN NETWORK” in connection with confusingly similar financial services and technologies including a digital currency and blockchain initiative for decentralization of privacy and digital ownership.

Upon information and belief, in or around 2023, ICE Labs adopted and used the trademark ICE and ICE-formative 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 whitepaper detailing various of its goods and services related to the blockchain, including cryptography services. Now, ICE Labs advertises its goods and services, including in the field of financial services and cryptocurrency, on the website at www.ice.io.

ICE Labs offers a cryptocurrency token or coin under the name 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., trading on the open market).

ICE COINS are currently traded on multiple cryptocurrency financial exchanges, networks, or blockchains including HTX (Huobi) Exchange, Biconomy Exchange, Tokero Exchange, the Arbitrum network, Solera blockchain, BitMart, and a number other platforms.

ICE Labs released public announcements about being listed on these exchanges containing statements like ,“don’t miss out on this exciting opportunity to trade Ice on Biconomy and be part of our growing community” and “this strategic listing on HTX……usher[s] in a new era of opportunities for Ice holders and traders 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 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 typeface.

But the disclaimer does not appear on ICE Labs “Whitepaper” explaining its cryptocurrency services and does not appear on the trading platforms which ICE COIN is traded in financial markets.

ICE says it is forced to bring this suit because ICE Labs refused to cease or limit its infringing the “ICE” mark and encroach on ICE’s protected goods and services.

Intercontinental Exchange argues that ICE Labs’s acts have caused monetary damage to ICE in an amount to be determined at trial as well as continuing to damage to ICE’s goodwill which cannot be adequately compensated by money damages alone, and such damage will continue and harm ICE unless and until ICE Labs is permanently enjoined.

ICE seeks that ICE Labs, and their officers, directors, affiliates, employees, successors be permanently enjoined and restrained from:

  1. Using the designation “ICE” including in connection with ICE Open Network or any logo or stylization in any manner in connection with the sale, offering for sale, distribution, or advertising of any goods or services that are not genuine ICE goods or services or not authorized by ICE;
  2. Using any mark or domain name that or otherwise taking any action likely to cause confusion or the mistaken belief that ICE Labs may in any way affiliated, connected to, or associated with ICE or its goods and services.

ICE also demands for a Court order requiring the transfer of ICE Labs www.ice.io domain name to ICE.

Intercontinental Exchange also seeks an order requiring ICE Labs to delete, disable, and destroy all materials which depict the ICE name and trademark, and all designations similar thereto, 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 sustained by ICE as a result of ICE Labs’ conduct (and that all damages be trebled due to ICE Labs’ exceptional conduct), reasonable attorneys’ fees, and the cost of the action.

ICE also seeks punitive damages in an amount to be fixed at trial.