Coinkite Inc. is the developer of the "BLOCKCLOCK," a product featuring seven electronic ink digits that provide customizable cryptocurrency and blockchain information, including cryptocurrency price, volumes, exchange rates, current coin supply, block height, and Merkle root. Coinkite Inc owns the trademark "BLOCKCLOCK" (Registration No. 7237159) in Class 9 in the United States.
The infringer BTCLOCK identifies its product as "BTCLOCK". It is defined as “a block with electronic ink displays, which can show stuff related to Bitcoin”. The use of "BTCLOCK" has strong similarities, both in name and functionality, with Coinkite’s registered trademark "BLOCKCLOCK", as follows:
1) Phonetic similarity: "BTCLOCK" and "BLOCKCLOCK" sound very similar. Both emphasize the term "CLOCK," with "BT" and "Block" being the only differences. The phonetic similarity can cause confusion, leading consumers to mistakenly believe the two products are related or come from the same business origin.
 
2) Visual similarity: The appearance of "BTCLOCK" and "BLOCKCLOCK" is also quite similar. "BT" and "Block" both consist of short prefixes followed by "Clock", which could easily cause confusion at first glance. In addition, the use of seven screens with electronic ink to display Bitcoin information gives the same impression in the users. The word BTCLOCK is displayed in the same exact position that it is in the BLOCKCLOCK.
 
3) Same functionality: Both products are aimed at a similar audience - people interested in cryptocurrency, specifically Bitcoin. Since both products appear to perform a similar function (displaying cryptocurrency prices), there is a high likelihood of confusion. Consumers might believe the two products are from the Coinkite, which is not accurate.
 
4) Risk of confusion: Since both devices seem to have similar functionality (displaying Bitcoin prices), this increases the chances that consumers could be confused about their origin. They may think "BTCLOCK" is a version or a rebranding of Coinkite's "BLOCKCLOCK." If "BTCLOCK" becomes associated with a different company or quality, it could dilute the distinctiveness of Coinkite's "BLOCKCLOCK".
The use of "BTCLOCK" in GitHub could be infringing Coinkite’s trademark rights.
 
What would be the best solution for the alleged infringement? Are there specific changes the user can make other than removal? (e.g., transfer of trademarked username to an existing company account, removal of trademarked logo or references to company)
 
(1) Cease and desist the use of the words BTCLOCK, BLOCKCLOCK or similar words in the following websites: https://github.com/btclock; https://btclock.github.io/web-flasher/
(2) Remove any pictures, documents, links with the words BTCLOCK, BLOCKCLOCK or similar words from the following websites: https://github.com/btclock; https://btclock.github.io/web-flasher/
(3) Suspend and/or terminate the infringer's account BTClock.