The COVID-19 pandemic has made people race to wash hands, stock up on toilet paper and sanitizer, and transition to working from home. But a separate group of “opportunistic” individuals have run another race—to the United States Patent and Trademark Office. As of April 2, 2020, more than 85 trademark applications have been filed for COVID-19 and Coronavirus related marks. The applied-for marks are largely for t-shirts, hats, apparel and stickers, but applications have also been filed for vaccines (“COVID-19 VAX”), rubber bracelets (“WASH YOUR HANDS!”), and beer (“SOCIAL DISTANCING”). A similar trend has been seen in China, with applications filed related to Huoshen Mountain Hospital, Leishen Mountain Hospital, and Dr. Li Wenliang.[1]
While some may find this move surprising, this pattern is familiar to intellectual properly lawyers. Whenever a new phrase or slogan enters the larger public consciousness, “enterprising” individuals will dash to the USPTO to file trademark applications. When President Donald Trump tweeted the word “Covfefe” in 2017, more than 40 separate trademark application were filed. Several applications for the phrase “Philly Special” were filed after the Philadelphia Eagles ran a trick play by that name during Super Bowl LII. Numerous applications were filed for “#MeToo” after the MeToo movement went viral in 2017. Most of these applications are unsuccessful and are abandoned.
The majority of the COVID-19 trademark applications will likely be rejected and abandoned because they rely on a fundamental misunderstanding of how trademark registrations work. The purpose of a trademark is to identify the source of the goods or services for the consuming public. Trademark law ensures that when you buy a soda with the words “Coca-Cola” on it, you can be confident that it actually is a Coca-Cola product and not a Red Bull. For this reason, unlike patents, trademark registrations do not rely on a “first to file” system. Rather, trademark rights are established through use of the mark, so the applicant must demonstrate that it is actually using the mark as a trademark in commerce before a registration is issued. Contrary to the beliefs likely behind most of these applications, slapping “I HEART CORONAVIRUS” on trucker hats and selling them is typically not enough to constitute use in commerce. Such use is considered “ornamental use” rather than an actual designation of the origin of the product and thus is grounds for rejection.
Many of these applications will likely also fail for the same reason the “covfefe” applications failed—it is incapable of being a source identifier. In the USPTO Office Actions rejecting the “covfefe” applications, the Office recognized that covfefe was a term originally written by President Trump in a tweet, which then went viral over the internet in news articles and social media postings, and ultimately led to a proliferation of apparel, mugs, beer, stickers, and other products with “covfefe” printed on them. As stated by the USPTO: “[b]ecause consumers are accustomed to seeing this slogan or term commonly used in everyday speech by many different sources, the public will not perceive the term or slogan as a trademark or service mark that identifies the source of the applicant’s goods, but rather only as conveying an informational message.”[2] The same is true of COVID-19, Coronavirus, and Social Distancing. These terms are now a permanent part of our daily vernacular and have been used countless times by thousands of sources. It is highly unlikely that “COVID-19”, “Coronavirus”, or “Social Distancing” could ever uniquely identify a specific person or entity as a source of goods.
These applications are frequently filed without an attorney involved, so misunderstandings about trademarks are not caught before the filing fees are paid. Ultimately, many of these knee jerk applications are a waste of time and money.
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[1] Aaron Wininger, “Chinese Trademark Office Cracks Down on Malicious Filing of Coronavirus-Related Trademarks”, The National Law Review, National Law Forum, LLC (https://www.natlawreview.com/article/chinese-trademark-office-cracks-down-malicious-filing-coronavirus-related-trademarks)
[2] USPTO Office Action for Serial No. 87470872 (8/14/2017) (http://tsdr.uspto.gov/documentviewer?caseId=sn87470872&docId=OOA20170814085059#docIndex=1&page=1)