More complications emerge over “Paysafe” trademark ownership in US
PaySAFE, LLC claims to have sold all rights in the PAYSAFE trademark to a company called Accruit, LLC.
Less than three months after Paysafe Holdings UK Limited and Paysafecard.Com Wertkarten GMBH launched a lawsuit against Nebraska-based PaySAFE, LLC over the use of the “Paysafe” trademark, more complications have arisen over the ownership of the trademark.
In a document filed with the New York Southern District Court late last week, the defendant – PaySAFE, LLC, says it has sold all the rights in the PAYSAFE trademark to another company. As a result, the defendant says that the UK company should not be targeting PaySAFE, LLC, and that the case against it should be dismissed.
The defendant explains that it changed its name in accordance with Nebraska law to PS software post closing, LLC. On December 22, 2017, Accruit, LLC, through its subsidiary Paysafe Acquisitions, LCC, both Delaware corporations, bought all ownership and control in the trademark PAYSAFE®, U.S. Trademark Registration No. 4,169,220, which is at issue in the complaint.
After being informed of the deal, the plaintiffs’ attorney requested to receive a copy of the purchase and sale agreement to be assured that the defendant did not retain rights in PAYSAFE®. The plaintiffs have refused to discontinue the action.
Let’s recall that, as per the complaint in this case, both the plaintiffs and the defendant in the case have trademark registrations related to the Paysafe name in the United States. The companies have co-existed without any clash over trademarks for years because PaySAFE LLC provides online escrow services for buyers and sellers of commercial goods such as cars and other vehicles, agricultural machinery, construction equipment, livestock, antiques, jewelry, art, and firearms under the trademark PaySAFE.
However, the defendant has allegedly started a campaign of interfering with Paysafe’s use and registration of its senior PAYSAFE trademark. Inter alia, Defendant has sent demand letters objecting to Paysafe’s ownership and use of the domain name <www.paysafe.com> (which Paysafe has owned since August 2011), Defendant has asserted that Paysafe’s use of Paysafe’s senior trademark infringes and dilutes Defendant’s junior rights.
Also, the defendant has objected to Paysafe’s use of the PAYSAFE mark on LinkedIn and other social media platforms, and Defendant has filed letters of protest with the United States Patent & Trademark Office (USPTO) objecting to Paysafe’s registration of its trademarks.
In addition, the Defendant has demanded $3.5 million in payment to drop its objections.
Paysafe Holdings UK Limited and Paysafecard.Com Wertkarten GMBH say they brought this action to prove that the defendant’s assertions are without merit and that the defendant’s actions have placed a cloud over Paysafe’s use and registration of its PAYSAFE trademark and <www.paysafe.com> domain name in the United States.