As an intellectual property attorney, I find the phenomenon of trademark opportunism to be a curious, and sometimes amusing, thing. (I don’t get out much.) As soon as a distinct word, phrase, sound bite, or concept emerges in popular culture, some folks run straight to their computers and file a trademark application, presumably hoping to capitalize by owning some exclusive right in connection with a hot topic.
When I arrived earlier this week at the International Trademark Association (INTA) annual leadership meeting in Hollywood, Florida, I encountered Zika virus health advisory notices at the Fort Lauderdale-Hollywood International Airport. Even though I am aware of the Zika virus, I had never encountered these notices before. Reflecting on that experience, it occurred to me that concerns over the Zika virus probably mobilized some trademark opportunism. Sure enough, this year more than a dozen individuals (as opposed to businesses) have filed applications to register trademarks containing the word ZIKA.
With Zika-virus-spreading mosquito anxiety growing, not surprisingly, most of the ZIKA-formative trademark applications are somehow connected to insect suppression goods, such as repellent or traps. Of course, it is not a foregone conclusion that none of these applications were filed for legitimate business purposes. A registration for an insect repellant mark containing the term “Zika” could be legitimately obtained. However, in such an instance the term is likely to be considered merely descriptive and should be disclaimed apart from the mark as a whole. Even so, as a side note, using “Zika” in this manner could subject a trademark owner to liability if it constitutes false or misleading advertising because it conveys an impression to consumers that the product is more effective against Zika-carrying mosquitoes than others and there is no evidence to substantiate this.
But what of the folks who were just jumping on what looked like a good opportunity without giving it much more thought, are these ZIKA applicants about to cash in? Probably not. Unfortunately, the elation of “Hurray, soon I shall be rich!” may quickly turn into “What do you mean I can’t get a refund on my application fees?”
Trademark law in the United States is unique as compared to other parts of the world. In many countries, merely applying for and obtaining a trademark registration conveys an affirmative, exclusive right to use the registered mark in connection with the claimed goods or services, subject to some checks and balances. In the U.S., however, one generally cannot obtain a trademark registration before a bona fide use of the mark in interstate commerce. In certain circumstances, a U.S. registration may be based for a limited time solely upon a registration issued in another jurisdiction rather than use, but U.S. applicants normally do not qualify for such protection. Otherwise, the right to trademark exclusivity is perfected through use, even without a registration, although a registration does come with certain benefits like the rebuttable presumption of trademark ownership and validity.
In the case of one of the ZIKA marks, use would mean actually selling ZIKA-branded insect repellent across state or international borders. However, given certain government preapprovals that are need before one can sell many kinds of insect repellants, an individual with no industry experience will almost certainly not be able to commence use right away. It is possible to file an application before using a mark in commerce via the so-called intent-to-use application, but if use is not ultimately proven, the application will simply become abandoned.
The average person, of course, is understandably not tuned into the intricacies of U.S. trademark law. So this practice will likely continue on unabated. Recent applications for CLINTON WORLD and STUMP FOR TRUMP have already met their demise (by the way, you can’t obtain a registration for a mark containing a famous person’s name without their permission), and applications containing ON FLEEK are no longer, in fact, on fleek. The downside to entrepreneurial, if misguided, trademark applications is usually no greater than the loss of a few hundred dollars in Patent and Trademark Office fees. However, one shouldn’t throw all caution to the wind. It may amuse you to know that someone other than Gretchen Wieners tried to make SO FETCH! happen, but there were already registered FETCH marks to block the application. In the worst-case scenario, an enterprising individual that actually uses their catchphrase mark in commerce could find themselves on the receiving end of an infringement lawsuit, which, as I understand it, is not so fetch at all.