Coronavirus-Related TM Filings Will Face Registration Hurdles

By Nicholas Hawkins and Rose Smalley
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Law360 (May 8, 2020, 2:25 PM EDT) --
Nicholas Hawkins
Nicholas Hawkins
Rose Smalley
Rose Smalley
In recent months, despite seeing a general decrease in filings, trademark offices across the world have received a considerable number of applications seeking to protect terms relating to the ongoing pandemic, namely "COVID" and "Coronavirus."

Here, we look at some of the more interesting business opportunities represented by these pending applications in the European Union, U.K. and U.S. and forecast some of the hurdles these applications might face in the coming months and years.

When did the applications begin?

In the U.S., the earliest filings appear to be from early/mid-February, where one company filed applications seeking to protect "Coronavax," COVID-19 Vax" and "Coronablok" for vaccines (somewhat unsurprisingly). The U.K. Intellectual Property Office received its first application days later for "Coronastop," interestingly for vitamin supplements.

However, the earliest EU Intellectual Property Office application was not filed until mid-March, for a logo featuring "AntiCorona," filed by an individual residing in Bulgaria for various goods and services.

Since the applications began, of these three territories, the U.S. has received by far the greatest number of "COVID" and "Coronavirus"-related filings. Our initial searches suggest over 200 relevant applications have been filed in the U.S., where there appear to be only around 35 in the U.K. and even fewer in the EU (as at the date of writing).

What marks are being filed?

As one might expect, the vast majority of these early applications are for marks indicative of medical diagnoses and treatments. In addition to those listed above, these include: "COVIDfree" (filed by an individual in the U.S. for various medical goods and services), "COVID-19 Rapid Test" (filed as a word and as a logo with the UKIPO by a Polish medical company for diagnostic apparatus), and "Medicovid" (filed for various medicinal products and treatments by a Germany company at the EUIPO).

These are accompanied by applications in respect of complementary goods and services, such as "Corona Kill" and "Coronacare" for sanitizers (U.K.), "CoronaGard" for disinfectant products (U.K.), "COVIDCare" for crisis and emergency response software services (U.S.); "Covidclean" for disinfection and cleaning quality management services (U.S.); "Coronaway" for various cleaning products (U.K.); and "CovidFaceShield" and "COVIDCuff," both for protective clothing (U.S.).

However, the disproportionately high number of filings in International Class 25 suggests that commemorative clothing may flood the market after the pandemic has overcome its peak. Applications for various apparel items include word and logo applications for "COVID Kids," "Coronababy," "Corona-Geddon," "I Heart COVID-19," "FXCK COVID-19," "Class of COVID-19," "coronacation," "Stronger than COVID" and "Sicker Than Corona" (notably, all of which are in the U.S., although a number of applications for clothing have been filed more recently in the U.K. and EU).

It will also be interesting to see how the U.S. Patent and Trademark Office will decide to deal with the following applications, all filed in Class 25 by different individuals and entities, within the space of three days: (1) "I Survived Coronavirus," (2) "I survived the Coronavirus 2020," (3) "I Survived Coronavirus 2020," (4) "I Survived the Coronavirus 2020," and (5) "I Survived Coronavirus."

There are, however, a few less predictable applications. One of the earliest applications filed in the U.S. was a logo for "Coronavirus"(stylized with black thorns) for prerecorded music and entertainment services.

Subsequently, there have been further applications for entertainment services, including an application to the UKIPO for a rather retro, "DISCOVID"; more applications in the U.S. for "Club Covid" and "Novel Coronapalooza," while an applicant to the EUIPO has opted for "Corona Party" and "After Corona Party."

The USPTO and UKIPO have received various International Class 16 applications for books and related items, for marks including "Coronavirus Survival Guide (U.S.)," "Covid Chronicles" (U.S.) and "Corona Diaries" (U.K.), and specifically for bumper stickers "Be COVIDgilant" (U.S.)

In the U.K., an upsurge in lockdown activities has resulted in applications filed for COVID-19 for use in connection with game boards for trading card games, as well as for "Coronayoga" for yoga instruction and training.

Finally, notable mention (for many reasons) must be given to a USPTO application for the serving of food and drink for the mark "Sanitize Your Thirst with a Corona."

What problems might these applications face?

People may question whether anyone should be able to commercially benefit from a global crisis, and therefore whether the relevant offices should refuse to register these applications on the basis of public policy and morality, a ground under which such applications can be refused registration absolutely.

Nevertheless, in practice, this basis for refusing marks is used sparingly — at least, in the jurisdictions in question — and such refusals tend to focus on applications encouraging or promoting illegality or criminal conduct, not as a means to censure free speech, which might (justifiably) cause some outrage or distaste.

The UKIPO saw through the applicant's attempt to disguise an obscenity by the use of asterisks in a logo for "F**K the Game" and initially refused the application on grounds that it was contrary to accepted principles of morality. However, the applicant overcame this objection by limiting the scope of goods and services in targeting them specifically to adults.

Notably, applications for the same mark also faced preliminary objections at the EUIPO (on similar grounds), while, interestingly, no objection on the basis of vulgarity was raised at the USPTO.

The registration of an application for "Fack Ju Göthe (the name of a famous German film franchise) was rejected in 2015 by the EUIPO on the grounds it infringed accepted principles of morality. Earlier this year, after numerous appeals, the Court of Justice of the European Union ruled that the mark is morally acceptable, emphasizing that an objective assessment is required on a case-by-cases basis taking into account the fundamental right of freedom of expression which must play a role in the trademark examination process.

More emphatically, the U.S. Supreme Court last year in the case Iancu v. Brunetti struck down a section of the Lanham Act that prohibited the registration of immoral or scandalous marks and allowed the applicant to register the mark "FUCT" (which stood for "Friends You Can't Trust"), for clothing. The Supreme Court had ruled previously in the 2017 case Matal v. Tam that the same statute's ban on disparaging marks, in this case an application for a band name called "The Slants," was also unconstitutional.

In both cases, the court held that the ban on the registration of these types of marks was viewpoint discrimination, and therefore a violation of freedom of speech principles under the First Amendment of the U.S. Constitution. No clauses exist in the Lanham Act that would necessarily strike down marks named after a global crisis, but if morality is the bar, freedom of speech may nonetheless prevail, at least for U.S. applicants.

Still, there are a number of other hurdles that these applications might face.

Firstly, the vast majority of the applicants are unrepresented, having filed in their own name, seemingly without the benefit of legal advice. Whether the draft specifications for goods and services will meet the standards required by the relevant offices will only become clear in the course of examination.

Secondly, some of the applications have been presented as alternatives (i.e., "COVID-19 or Coronavirus," "COVID-19 / Coronavirus"), so the applicant may face queries about whether the representation of the mark is sufficiently clear and precise, which is required to achieve registration. Notably, as changes cannot be made to the representation of the mark filed in any of the U.K, EU, or U.S., this may be fatal to the application progressing.

Thirdly, although no such requirement exists in the EU (thereby possibly suggesting there is a lesser burden on potential applicants, which is interesting given it has seen the least number of applications), both the U.K. and U.S. require that — when the application is filed — there is at least a bona fide intention to use the mark in commerce, unless the mark is already in use.

In the U.K., the assessment of whether a bona fide intent exists is not independently undertaken by the UKIPO, so it would require the intervention of interested third parties to challenge whether such intent existed by arguing that the application was made in bad faith by the applicant. This could be because the applicant has no intention to use the mark, or has filed a scope of goods/services broader than the intended use and/or simply in order to prevent others from using the mark.

If no third party intervenes and any of the applications successfully achieve registration, whilst third parties could challenge the registrations on those same grounds of bad faith (as above), the registrations cannot be challenged on the grounds of nonuse (if bad faith fails) for five years from the date of registration.

This means that, if they pass the UKIPO's assessment, registrations could be granted and remain on the register (indefinitely, pending payment of renewal fees) if no third party wants to incur the costs of opposing the application, or invalidating or cancelling the registration.

In the U.S., the analysis is the same. The USPTO does not evaluate whether the applicant has a good-faith-based intention to use a particular mark during the examination period. The verified statement of a bona fide intention to us a particular mark is sufficient.

For marks used in commerce, the applicant's submission of an improper specimen (evidence that should show how the mark is used) may convince the USPTO that the applicant does not in fact have a bona fide intention to use the mark, but the USPTO will not inquire unless the evidence is clear.

The only other time the USPTO will independently evaluate the owner's intention to use a mark is during the required declaration of use filing (whereby the registrant is required to show that the mark is being used as registered), which is due between the fifth and sixth anniversaries of the trademark's registration. Similarly, if the applicant signs the verified statement and produces a legitimate specimen, the registration rights continue for the duration of the trademark registration.

In terms of third-party intervention, among other grounds, parties can petition to cancel a trademark registration at any time if the mark is or becomes generic of the goods or services, if the registration was obtained fraudulently, or if the mark has been abandoned. A party wishing to cancel a mark for abandonment must show nonuse of the mark for three consecutive years, therefore effectively making a mark not vulnerable to a nonuse cancellation until after the third year of registration.

Finally, there is possibly the biggest question looming over the potential registration of these applications: are any of these marks are capable of being trademarks in the sense recognized by the relevant offices?

According to trademark law (in the EU, U.K. and U.S.), a trademark must be capable of identifying the provider or originator of the goods or services being offered under that mark. Specifically, this means that the mark must be sufficiently distinctive, and not descriptive, so that it can identify the applicant over other parties offering the same goods and services.

Although the threshold to be met varies between jurisdictions (at least, anecdotally) — particularly as to whether a mark is considered descriptive — this considerable uptick in applications, some of which are arguably very descriptive of their goods and services, means it is likely to be incredibly difficult for the relevant offices to determine that any COVID- or coronavirs-related filings can, and should, be easily and demonstrably associated with any specific businesses.

Given the delays and disruptions caused by the pandemic for each of the offices, most (if not all) of these applications are still pending detailed examination, but the next few months will definitely be interesting for these opportunistic applicants.

Nicholas Hawkins and Rose Smalley are associates at Womble Bond Dickinson.

The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.

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