By Alex Butterman

Butterman is Senior Counsel at Dunlap Bennett & Ludwigs Leesburg Office

[April 23, 2020 Leesburg]   Whenever our society experiences a catastrophe, a tragedy, a calamity, a “viral” trend, a phenomenon or any other story that dominates the news, invariably a number of people feel compelled to register as a trademark the popular terminology describing that story. The current “COVID-19” or “CORONAVIRUS” “PANDEMIC” is no exception and, in fact, is replete with terminology and situations that are particularly enticing for pursuing a trademark registration. The terms COVID-19 and CORONAVIRUS are brand new terms never before thought of or used by the general population which is now as common, used, and needed as phrases like “how’s the weather” and “what’s for dinner.” The pandemic that these terms refer to are top of mind and dominate almost every aspect of our daily lives at the present time and for the foreseeable future for obvious reasons. And if a common understanding of a “trademark” is an exclusive right to own whatever is registered as a trademark at the U.S. Patent and Trademark Office (USPTO), our capitalistic societal instincts entice us to register the words and phrases describing or labeling this current news story. The conventional thinking is that owning such a trademark registration prevents others from using that mark and the elevated demand to use these popular terms will command an equally elevated price for the so-called mark owner to permit that use.

However, this common understanding is actually a gross miscalculation and will more than likely lead to a waste of money rather than a windfall. Let’s begin with the correct definition of a “trademark.”  A trademark is “a word, phrase, symbol, or design, or a combination thereof,” that identifies and distinguishes the source of the goods of one party from those of another. This definition is in a federal statute called the Lanham Act but derives from U.S. common law which recognized a trademark right only from the use of a mark to identify a particular business or product publicly available for purchase. While the Lanham Act provides for a trademark registration system with the USPTO, the registration of that mark is not necessary to create a trademark right and mere registration of the mark without any use of that mark on business in U.S. Commerce will not result in the issuance of a registration. So people’s understanding that the prevalent terminology can be a mark is correct. But where are the goods or where is the business to be associated with this terminology to create the trademark right in these terms? Clearly a pandemic or tragedy is not a business so the trademark registration application, which costs $275 per class of goods[1], will not automatically become a trademark registration for the label of this event.

Every trademark application will undergo a strict examination by a trademark examining attorney at the USPTO before it is allowed to register. The examiner will only approve a mark for registration if the mark is not already registered by another party for the same or related goods/services and if the mark functions as a mark, meaning it identifies the source of a particular product or service.

So let’s consider the 200-plus new applications filed since December 2019 that feature a COVID or CORONA formative (see fig. 1 above showing the first page of results of a trademark search in the USPTO database), of which 92 applications cover clothing (see fig. 2 below showing the first page of results of another trademark search in the USPTO database). Why so many clothing marks?  Because clothing is a simple business with a minimal barrier of entry: it is easy to acquire t-shirts and have them silk-screened with the so-called “mark” that is being registered

The applicant of one of the above marks probably believes that he/she has satisfied the necessary criteria to register their mark because they thought of a distinctive mark and claim that it will be used to identify their clothing or t-shirts. In order to obtain the registration, the applicant will need to show the examiner how the mark will appear on the product on the actual market, i.e. their “use” of the mark. The examiner will examine this evidence of use of the mark as if they are a consumer looking to purchase this product and will encounter the following issues:

  1. Ornamental: The shirt will show the mark CORONAFREE prominently flashed across the stomach and chest. When you see that shirt in a store and are considering buying it, will CORONAFREE look like a brand of shirt made by a company called Coronafree, or will CORONAFREE look like a decorative feature of the shirt? Probably the latter and this decorative feature of the shirt would likely be the reason for purchasing it. This is known as “ornamental use.” It is not use of the CORONAFREE term as a trademark because it is not identifying who produces the shirt. Anyone could be producing this shirt.
  2. Failure to Function: This is similar to the ornamental issue but more general. Let’s say the applicant is aware of the ornamental issue in no. 1 and in addition to placing the COVID or CORONA mark prominently as a decorative feature on the shirt, the applicant places the mark on a hang tag hanging from the shirt or even on a cloth label in the shirt. Everyone now understands the terms CORONAVIRUS and COVID as common terms referring to one of the worst pandemics in world history. Any phrase or variation of this term is likely to be interpreted by customers as making a statement about the pandemic or providing information like the wearer had COVID and survived. The mark will not be perceived as functioning as a mark by identifying that a company named COVID makes and sells the shirts. This is known as a “failure to function” (as a mark) or a “merely informational” refusal.

The two above refusals are the most common reasons why registering a new popular, newsworthy term will usually fail. However, another reason which is particular to the examination of the mark CORONA, or any other newsworthy term that was also a trademark, is a likelihood of confusion. We all know a large Mexican brewery that makes a well-known brand of beer called CORONA. This company also uses CORONA on clothing and a number of other products. The USPTO examiner could conclude that one of these CORONA marks will be mistakenly perceived by consumers as referring to the beer company and not the applicant and will issue this likelihood of confusion refusal in the initial examination of the application. The CORONA beer manufacturer could also oppose this application at the USPTO in an administrative court known as the Trademark Trial and Appeal Board.

Putting aside the arguably distasteful nature of attempting to capitalize on the misfortunes of others by registering as a mark the label of a natural disaster, tragedy or in this case a pandemic, the upshot of all this is that the applicant will likely spend between $200 and $2,000 or more (depending upon if an attorney is hired and how many classes are applied for) to register a mark that will never register. Not all of these trademarks and business ideas in this most unprecedented event should be viewed negatively, however. Looking through the fifty percent of these marks that did not cover clothing, I noticed a number of legitimate, potentially useful businesses aimed at resolving the pandemic and minimizing its effects such as creating COVID tests and cures, manufacturing protective equipment, charities to raise funds for healthcare workers and victims and other goods and services apparently inspired by the challenges to daily life brought on by this pandemic.

If you have a business idea inspired by the unfortunate circumstances caused by the COVID-19 pandemic, attorneys at Dunlap Bennett & Ludwig are eager to help you assess and implement that idea so it is productive and beneficial rather than wasteful.

[1] The USPTO divides all goods into 35 “International Classes” and services into 10 International Classes, each of which requires a $225 to $275 government filing fee.

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Posted in: Intellectual Property, Intellectual Property - Trademarks

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