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INSIGHT: Is It Time for a Quarantini? Lessons for Covid-Related Trademarks

June 4, 2020, 8:01 AM

As the coronavirus pandemic continues, the U.S. Patent and Trademark Office has seen an influx of trademark applications containing the term “COVID” and variations of the term “CORONA.” These applications, currently in the hundreds, cover various goods and services ranging from clothing and jewelry to vaccinations. Unfortunately for the majority of these applicants, attempts to capitalize on the global pandemic are unlikely to lead to trademark registrations.

The USPTO is no stranger to rushes to file trademark applications in order to capitalize on a trending term or phenomenon. For example, during the 2016 presidential election, the USPTO saw over 250 applications for phrases resembling President Donald Trump’s core campaign slogan, “Make America Great Again.” Of the 250 applications that were filed in connection with this slogan, less than 60 were successfully registered.

Similarly, following the president’s use of the term “covfefe” in a tweet in 2017, the USPTO saw 44 attempts to register the term, none of which were successful. What differs in this situation is that we are dealing with a global pandemic threatening the lives of millions of people across the globe.

Avoiding Consumer Confusion

This trend to register common phrases illustrates a deeper misunderstanding of how trademark law works. The purpose of a trademark is to identify the source of a good or service and preclude consumer confusion in the marketplace. It appears that applicants of the “COVID” and “CORONAVIRUS” marks, many of which are individuals, fail to understand this pillar of trademark law.

Unfortunately for the majority of COVID applicants, applications to register a common phrase or term fail to uniquely identify the source of the goods and services and will likely be rejected by the USPTO. In rejecting the “COVFEFE” applications, for example, the USPTO stated that the marks failed to function as a trademark because third parties commonly use the wording “COVFEFE” “to convey a social, political, or similarly informational message in support or disapproval of President Trump rather than to denote the source of goods or services.”

On the other hand, the USPTO granted a registration for “CORONA” in connection with beer to the makers of the famous beer, Cervecería Modelo de México. At the time of registration in 1981, this use of the term was likely considered arbitrary because the word “CORONA” is unrelated to the product being offered in connection with the mark.

No Showing of Bona Fide Intent to Use the Mark in Commerce

To receive federal trademark protection, an applicant must also show that it has a bona fide intent to use the mark in commerce with the goods and services specified in the application. It is unlikely that the majority of COVID applicants will actually prove that they are using the marks on real-world goods or services.

In fact, these “get rich quick” schemes originating from widespread trending events are often unsuccessful, as seen with the failed attempts to register the “MAKE AMERICA GREAT AGAIN” and “COVFEFE” marks.

Over 200 “COVID” and “CORONA”-formative applications have been filed with the USPTO to date. More humorous attempts to register the term include eight applications for “QUARANTINI” in connection with goods and services ranging from alcoholic beverages and vitamin and mineral supplements to downloadable podcasts.

USPTO Will Closely Scrutinize Applications

In light of the underlying purpose of trademark law, some, and perhaps many, of these attempts to cash in on the pandemic will be closely scrutinized by the USPTO. Trademarks that are using such terms to merely describe a feature or purpose of the applicant’s goods or services are unlikely to be accepted by the USPTO because they fail to identify and distinguish the source of the applicant’s products.

The USPTO may require a disclaimer of “COVID” and related terms as a condition of registration if these terms are merely descriptive of the goods or services covered by the application. Similarly, applications filed in connection with clothing that feature a “COVID” trademark as merely an ornamental or decorative feature will likely be refused by the USPTO for failing to indicate the source of the goods.

However, some uses of “COVID” and “CORONA” may be considered by the USPTO as legitimate trademark use. For example, trademarks using such terms to suggest a feature or purpose of applicant’s goods and services arguably serve as a source identifier and could function as a trademark.

This column does not necessarily reflect the opinion of The Bureau of National Affairs, Inc. or its owners.

Author Information

Hillary E. Maynard is an associate in the Chicago office of Ulmer & Berne LLP where she counsels clients on intellectual property matters, including trademark matters, unfair competition, and copyright issues. She also handles trademark clearance, prosecution, portfolio maintenance, and enforcement for brand owners in multiple industries.