Law360 (August 27, 2020, 6:46 PM EDT) -- Two Greenspoon Marder LLP intellectual property attorneys said during a webinar Thursday that anyone who wants to own the rights to internet memes and pop culture phrases is confusing trademarks with copyrights and that efforts to obtain trademark registrations for trending terms like "Karen," "COVID" and "OK boomer" will likely fail.
Sharon Urias, who litigates intellectual property matters, and Justin McNaughton, who advises clients about trademarks, copyrights and patents, said there has been an influx of people "jumping on the bandwagon" to try to obtain trademarks registrations for popular phrases, and it just can't be done.
The purpose of a trademark is to identify a brand and its product, McNaughton said, and whether a term can become a trademark hinges on its descriptiveness and whether it's a common phrase. If it's something people commonly say or it directly describes what someone is selling, it can't become a trademark, he said.
For example, the owner of an orchard who sells apples can't register "apple" as a trademark in connection with his or her products, McNaughton said. But the owner of a computer company can register "Apple" to identify the brand because the business is not selling actual apples.
Now take the phrase "OK boomer," McNaughton said, which is used by teenagers and young adults to mock outdated ideas held by older people, typically from the baby-boom generation. Twelve applications have been filed with the U.S. Patent and Trademark Office for a trademark on the viral phrase, including for clothing, toys, games and even a reality show from Fox Media LLC.
Those trademarks are being refused because "OK boomer" is a common phrase, McNaughton said.
Urias said it's the same for the pejorative term "Karen," which usually describes a middle-aged white woman who is perceived as entitled or demanding beyond the scope of what is appropriate or necessary. Nine trademark applications have been filed so far, mostly for clothing products that want to use the phrase "Don't be a Karen" or "Not today, Karen."
In these cases of applications for viral memes or catchphrases, Urias said, people seem to be confused about the difference between trademarks and copyrights. The purpose of trademarks is to identify a brand, while copyrights are for creative works, anything from a photograph to a design.
And although the word "Karen" is too short to be copyrighted, a T-shirt design that says "Don't be a Karen" stands a better chance of getting a copyright, she said.
As for the word "COVID," McNaughton said it didn't really exist prior to February 2020. In fact, there was just one trademark application for "COVID" for a company that made holographic images used on credit cards, but that company has since gone away, he said.
Since the outbreak of the pandemic, McNaughton said, there have been more than 330 applications with "COVID" in them and another 50 with "coronavirus." About 120 of those are for apparel products, such as T-shirts, another 74 are health care-related and the rest are for more random items, such as bumper stickers and jewelry.
One of the first applications filed was for a "Coronavirus Survival Guide" magazine, but it was rejected, McNaughton said. Another early file was for "COVID Vaccine" related to health care, but the USPTO rejected it as too descriptive.
Applications for COVID apparel were also refused because it's not a trademark if someone just writes "COVID-19" or "I survived COVID-19" on a shirt, McNaughton said.
"People think if they're the first ones to file, they can somehow get money out of it later," McNaughton said.
McNaughton and Urias said they don't think intellectual property attorneys will see much litigation work come from "Karen," "COVID" or "OK boomer" trademark attempts, however, as most litigation centers on successful trademarks and people challenging the validity of those marks.
--Editing by Stephen Berg.
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