Benjamin Franklin famously said that “nothing in this world can be said to be certain, except death, taxes, and the entrepreneurial spirit of Americans to turn a crisis into a business opportunity.” That quote may not be entirely accurate, but the U.S. federal trademark register serves as a historical record of this entrepreneurial spirit, from the various applications related to 9/11 in the wake of that tragedy, to the dozen BOSTON STRONG trademark applications filed soon after the Boston Marathon bombing. Most of these trademark filings are long-abandoned, a field of virtual, sun-bleached bones that should serve as warnings to opportunistic would-be brand owners with their eyes on “trending” terms related to public crises.
An Outbreak of Recent Filings
Not to be deterred by the fate of previous opportunistic applications, a new wave of trademark prospectors has filed a large crop of federal applications to register marks related to the COVID-19 epidemic, incorporating the terms COVID-19, CORONAVIRUS, and variants thereof. This latest wave is probably bigger than any previous current events-based filing influx – consisting of many dozens of filings – and is likely representative of the fact that the COVID-19 epidemic is not only highly topical for brand exploitation purposes, but also is depriving a great many of these aspirational trademark owners of their previous livelihoods.
Unfortunately for these entrepreneurs, the vast majority of these trademark applications are bound for the scrap heap. I have personally reviewed every single application I could find on the USPTO TESS system as of April 6, 2020 related in some way to COVID-19, and as you can imagine, many of them are…wanting, whether because the marks are clearly descriptive, obviously informational, or have some other deficiency.
What most opportunistic trademark filers don’t appreciate – usually because they haven’t consulted with trademark counsel – is that trademarks have certain baseline eligibility requirements for registration. For instance, terms must be capable of functioning as trademarks, meaning their use or intended use can’t be merely ornamental or informational in nature. Thus, terms that merely convey a sentiment, or general information, about COVID-19 – usually on the front of a t-shirt – as opposed to identifying and distinguishing the applicant’s goods from those of others, can’t be registered. Further, in order to function as trademarks, terms can’t be “merely descriptive” of the products or services to which they’re applied, or of a feature or characteristic thereof. Since very few of the recent COVID-19 or CORONAVIRUS-formative filings are likely to meet these threshold requirements, most of these applicants have spent hundreds – and in some cases thousands – of dollars attempting to register terms and slogans that they can’t possibly hope to register, let alone monopolize in the marketplace.
While it’s not impossible for some of these terms to function as trademarks if used properly as brands, and while I believe that Examining Attorneys should sometimes wait until the Statement of Use phase to make the failure to function determination (this is something I heatedly discussed on a BPLA panel recently), as a practical matter the USPTO likes to nip such applications in the bud, particularly when related to public crises or other trending topics.
My Favorites of the (Mostly) Doomed Applications
For illustrative purposes, I’ve selected a few of the more colorful applications to discuss. Most of these, I suspect, are destined for failure, though at least a few have a fighting chance. Let’s jump in!
- I SURVIVED THE CORONAVIRUS and variants. This is one of a dozen applications for identical and highly similar marks (I SURVIVED COVID-19, I BEAT THE CORONAVIRUS, etc.), all covering apparel, bumper stickers, buttons, and so forth, and they are all likely to be refused for failure to function as trademarks, not to mention that given their similarity to one another, most will also be suspended, possibly to be refused based on likelihood of confusion, pending the disposition of the earlier filings in line. Applications that are suspended are likely to lapse eventually, though it could take years.
My favorite of these variants is an application to register WE SURVIVED CORONAVIRUS (OR) COVID-19, which I think is an attempt to secure a phantom mark for both WE SURVIVED CORONAVIRUS and WE SURVIVED COVID-19. A similar strategy was employed for I SURVIVED THE CORONAVIRUS/ COVID-19 OF 2020.!, which, yes, features both a period and an exclamation point at the end. These applications are doomed, but I’d buy these t-shirts.
- FXCK COVID-19 and FXCK CORONAVIRUS, for apparel. These applications are also destined for failure to function refusals, but at least they won’t also be refused as scandalous! I also appreciate the sentiment.
- These logos, all for apparel:
The design elements tend to emphasize the ornamental, non-trademark nature of the subject matter, so failure to function refusals are almost certain.
- , for apparel. This one is in particularly poor taste, given that it’s evocative of the famous I (HEART) NY logo, while New York itself is currently the unfortunate heart of the coronavirus pandemic in the United States. I wonder whether the New York State Department of Economic Development will have something to say about this one.
- CORONAVIRUS: MADE IN CHINA, for apparel. Can a proposed trademark simultaneously be merely descriptive, probably racist, and fail to function as a source identifier? Quite possibly! While the racism is now totally kosher, mercifully the failure to function refusal is likely.
- This drawing: for t-shirts and hats. I don’t see how this could fit on a hat, let alone serve as a source indicator. Even the U.S. Copyright Office might not register this one, though that’s…quite a drawing.
- COVID-19 VAX, for vaccines. It’s certainly possible that this mark could be considered descriptive but not generic, and therefore registrable on the Supplemental Register. In order to move this application to the Supplemental Register, the applicant would have to demonstrate active use of the mark in commerce for COVID-19 vaccines (at least in clinical trials), which would be great for non-trademark-related reasons! However, I think this mark is more likely to be considered generic, and therefore incapable of acquiring trademark significance. This one is almost surely doomed.
- COVID PRO QUO, for apparel. As a lawyer I am of course contractually obligated to enjoy a Latin pun, and as a bonus this one’s also a political reference. However, because we’re in the Darkest Timeline it probably also ties into a COVID-19 conspiracy theory that I’m not willing to research on Google. In any event, I see a failure to function refusal incoming.
- COVID-19 TAKES DOWN COVFEFE, for custom imprinting of clothing. Another political reference, and one that seems hard to imagine functioning as a trademark.
- CORONA COUTURE, for various protective gear and apparel. Of all the marks on this list, this is the one that I feel has the best shot at registration. CORONA is probably merely descriptive of all the goods, and COUTURE is typically considered to be a descriptive trademark formative when it comes to apparel, such that a partial mere descriptiveness refusal is foreseeable. But for the protective equipment, at least, there’s an element of incongruity – can something as utilitarian as personal protective equipment be couture? – that can probably vault the applicant over the 2(e) hurdle. Of course, poor Grupo Modelo, the proprietors of refreshing CORONA® brand cerveza, may have something to say about this application, and many others. On that point, it is most assuredly not a coincidence that Grupo Modelo has filed a number of applications in the past week covering much of the various apparel and merchandise targeted by our opportunistic filers. Probably a good time to shore up that trademark portfolio.
- CATS AGAINST COVID-19, for retail apparel stores. First of all, I would like to express my appreciation that our most aloof and indifferent animal companions are in our corner in this time of crisis. Second, this application also has a better chance than most of the others to secure registration, as it’s easier to brand services, as opposed to goods, in such a way that customers would view the use as a trademark, as opposed to a non-source-identifying sentiment (e.g., by using the slogan as a mark on a website).
- CORONA STRONG, for “beauty masks” and shirts. I think this is a BOSTON STRONG reference, and is probably intended to suggest “standing strong against the coronavirus,” though there are other possible interpretations. For instance, on beauty masks the mark could convey that the masks are “strong” against coronavirus, which could present descriptiveness issues (and possibly false advertising concerns?). This mark might be registrable, at least in part, if used properly.
- COVID-19 INFECTED and CORONAVIRUS INFECTED, for t-shirts. A good PSA, I guess? But pretty bad trademarks, all things considered.
- LOVE IN THE TIME OF COVID, for…a wide array of misclassified goods and services in Class 41. I predict an uphill battle demonstrating trademark significance, but I’m rooting for this excellent Gabriel García Márquez reference!
- CLUB COVID, for “we are selling entertainment.” This could certainly be a viable, though possibly descriptive, trademark for entertainment services. Or a nightclub…that most people, I think, would prefer not to be caught dead at.
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I have a feeling that this is merely the first wave of such applications, so perhaps we’ll check back in a few months to see if there’s a more promising crop. In the meantime, folks, stay safe out there and consult your friendly neighborhood trademark attorneys before spending money on opportunistic trademark applications.