Opportunistic Trademark Filings in the Wake of COVID-19
The emergence of the COVID-19 global pandemic has seen an influx of trademark applications referencing the pandemic, seemingly filed in an attempt to capitalize on the unprecedented nature of this cultural moment. As of September 16th, the United States Patent and Trademark Office’s Trademark Electronic Search System (“TESS”), which allows users to browse registered trademarks and trademark applications, returned 429 results for the term “COVID,” 125 results for “pandemic,” and 114 results for “quarantine.”[1] These include applications for word marks such as “Covid Vaccinated,”[2] “I SURVIVED PANDEMIC 2020,”[3] and “Corona Free,”[4] to be used on printed media, cookware, clothing items, or a combination thereof.
This is not the first time the USPTO has seen an influx of trademark applications in response to a trending topic or event. For instance, when President Trump sent out a now-infamous Tweet misspelling the word “coffee”, the office saw an influx of applications for “covfefe.”[5] A significantly more somber, but related example of this phenomenon is that of the Boston Marathon bombing in 2013. The event elicited nine different applications for the phrase “Boston Strong.”[6] However, the nine applications for “Boston Strong” were ultimately rejected,[7] and the “Covfefe”-related applications have not seen much greater success.[8] A brief look at federal trademark law gives some insight as to why.
Federal trademark law is governed by the Lanham Act. The Act states that a “trademark” includes “any word, name, symbol, or device, or combination thereof— (1) used by a person, or (2) which a person has a bona fide intention to use in commerce . . . to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of the goods.”[9] Furthermore, the Supreme Court has held “the more distinctive the mark, the more readily it qualifies for the principal register.”[10] Marks that are not inherently distinctive must demonstrate something called “acquired distinctiveness” in order to qualify—that is, they must have “achieve[d] significance in the ‘minds of the public’ as identifying the applicant’s goods or services.”[11]
Many of the coronavirus-related applications that have recently been filed will likely run up against difficulties meeting both of the aforementioned requirements. First, if applicants have filed before actually manufacturing goods incorporating the mark, or before demonstrating a bona fide intention to do so, their applications will fail to fall within the scope of what a trademark actually is. Second, marks that are squarely centered on the coronavirus and therefore rely heavily on pandemic-related vocabulary risk being too descriptive. As such, they will have to pass the test for acquired distinctiveness, which only becomes more difficult as a mark’s descriptiveness increases.[12]
Indeed, as decisions from the patent office have begun to come in, the apprehension many have expressed over these coronavirus-related applications has begun to be confirmed.[13] Most of these applications have resulted in refusals.[14] One application for “Coronavirus Outbreak,” in which the specimen of use consisted simply of “the term ‘digitally superimposed’ onto a T-shirt” was rejected for failure to prove the mark was used in commerce.[15] Another application for the mark “COVIDClean” was refused in part for being merely descriptive.[16]
Only time will tell how many of the hundreds of coronavirus-related trademarks will actually end up gaining approval. Hopefully the situation will reinforce what the influx of “covfefe” filings taught us: to successfully obtain a trademark, one needs to do more than simply file an application for an unadorned version of a trending phrase or event that one has not used and has no real intention of using in commerce. However, an application for the mark “Covfefe-19” suggests it may be a while before that message gets through.[17]
Footnotes
