Really? Someone Thinks I HEART COVID-19 Should Be Awarded a US Trademark Registration?

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Aside from I HEART COVID-19 (stylized) being an offensive slogan given the hundreds of thousands of people affected throughout the world by the coronavirus pandemic, the U.S. trademark application for this slogan, filed by an entity called Bad Covid, LLC, is likely to fail like most of the other opportunistic trademark filings for terms related to the pandemic.

As of March 26, there were no less than two dozen trademark applications filed with the U.S. Patent and Trademark Offices (USPTO) for marks that include the term COVID and at least 32 applications filed for marks that include the term CORONAVIRUS. The vast majority of the applications are for T-shirts or other forms of clothing and include such “tasteful” slogans as Class of Covid-19, FXCK COVID-19, COVID KIDS, CORONAVIRUS: MADE IN CHINA and CORONAVIRUS INFECTED. There are also several new applications filed for marks that include “social distancing,” such as SOCIAL DISTANCE FITNESS. Not surprisingly, there are even two new competing pending applications for QUARANTINI and one new application for QUARANTEEN.

Many of the applications have been filed by individuals or LLCs on the basis of an “intent to use” the mark, although several applicants already claim to be using their respective marks. By the look of the applications, most of the filers likely do not understand U.S. trademark law and are simply hoping to capitalize on the current crisis. For example, a review of the specimens submitted with the alleged use-based applications reveal “use” that is highly suspect, i.e., T-shirts bearing photoshopped slogans. In another instance, an individual filed two applications for COVIDFREE for hundreds of goods and services, from alcohol for medicinal purposes to medicated aftershave lotions to stem cells for medical purposes to charitable services. It is this last category that we should be most wary of.

Fortunately, most of these applications will fail. The USPTO does not simply reward the first filer of a slogan with a trademark registration. Rather, to secure a trademark registration in the United States, a trademark applicant must either be using a mark in commerce on specific goods or services or have a bona fide intent to use the mark on such goods or services and not merely to reserve rights in the mark. Therefore, placing a slogan on an article of clothing will generally not be sufficient to secure a trademark registration nor will it be considered trademark use.

This isn’t the first time that there have been opportunistic trademark filings. Back in 2017, when President Trump tweeted the word “covfefe,” 42 trademark applications were filed for marks that included the term COVFEFE, 38 of which have already been abandoned, with the remaining four unlikely to be successful. Apparently, human nature, being what it is, makes people believe that they are so clever they should be awarded a trademark registration. To the contrary; in most cases, they are simply wasting their money.

Trying to capitalize on current events isn’t unique to trademark filers in the United States. The Chinese Trademark Office has taken action on more than 1,000 trademark registrations related to the coronavirus. Trademark applications were filed for marks that included the names of renowned doctors and hospitals in the central Chinese city of Wuhan, as a means of marketing. Citing negative influence on society, the Chinese government has since banned the registration of such trademarks. South Korea has at least eight pending applications for marks that include “corona,” including CORONA KILLER, filed by a company that does not produce goods or services directly related to the virus. Other trademarks applied for by individuals in South Korea include CORONACOP and NO CORONA. The Mexican trademark office currently has a pending application for CORONAVIRUS for beer, while an applicant in the European Union has filed an application for CORONAVIRUS for essential oils and aromatic extracts, preparations for cleaning and flavoring, agricultural and hydroponic crops, horticultural and forest products, beers and their derivative, and alcoholic beverages and cider. Applicants in Chile, Germany, Italy, Spain, India and New Zealand have also filed trademark applications for marks containing the term CORONAVIRUS.

Fortunately, none of the COVID-19 or CORONAVIRUS trademark applications are likely to find their way into the USPTO database as registered marks, but not because they are offensive. As the Supreme Court held last year in Iancu v. Brunetti, “offensiveness” alone will not bar registration of a mark. Rather, most of the applications will likely fail because the filings are either not based on a true bona fide intent to use the mark, or they will fail because they do not function as a mark. Of course, if an applicant can show that they are using the mark for a legitimate purpose, they may succeed in getting a registration. However, even in those limited circumstances, the USPTO will likely require that the term be disclaimed as generic, which means that it would be available for all to use if necessary.

So, for all of those “clever people” who think that they might be able to use the pandemic virus as an opportunity to “get rich quick,” my advice to you is “don’t waste your money.” Spend it on something you might really need, like toilet paper. Of course, during these stressful times, we all need a little humor during our day. Just remember, though, what may be amusing to you may be highly offensive to someone directly affected by the deadly coronavirus.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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