By Bill Donahue

Law360 (September 1, 2020, 8:50 PM EDT) -- Six months into the pandemic, a huge number of trademark applications have been filed for "COVID" and "coronavirus" — and examining attorneys at the U.S. Patent and Trademark Office have recently started to wade through them.

USPTO records show that since March, more than 400 applications involving the word "COVID" have been filed. More than 50 applications that feature the word "coronavirus" have also been lodged.

The rush for such trademarks was no surprise. Whether it's a viral presidential typo or a Super Bowl-winning trick play, the emergence of a new term that captures the zeitgeist is now almost always followed by a flood of trademark applications.

But the COVID-19 pandemic has seen that phenomenon play out in overdrive, leaving examining attorneys at the USPTO to sift through the hundreds of applications, often filed without an attorney and containing serious flaws.

Starting in July, attorneys at the USPTO began to issue initial decisions on the "COVID" and "coronavirus" applications. Those "office actions" have mostly come from just one unit of examining attorneys, Law Office 130, and they often share similar language about the pandemic.

"The Trademark Office usually does implement a top-down plan once a trend is recognized," said Thomas W. Brooke, a partner at Holland & Knight LLP and former chair of the U.S. Trademark Office Practices Subcommittee at the International Trademark Association.

"Typically, similar applications will be routed to the same law office, and examining attorneys will be encouraged to use the same language," Brooke said.

So far, most of the decisions have been refusals, often for the very reasons predicted by experts when the wave of COVID trademark applications began.

Many applicants have been refused because their supposed trademark — a reference to a world-spanning event that has sickened millions and ground life to a halt for months — is inherently incapable of functioning as a distinctive designator of any single company.

"This term or expression — 'I Survived COVID-19' — is commonly used by people who recovered from the virus and often accompanied with an account of how that experience has been, physical damages they suffered and a message of solidarity with other survivors," an examining attorney wrote in a July 28 office action.

"Because consumers are accustomed to seeing this term or expression commonly used in everyday speech by many different sources, they would not perceive it as a mark identifying the source of applicant's goods," the USPTO attorney wrote.

Other COVID-themed applications have been refused because they are generic for or merely descriptive of the goods or services listed in the application.

"The mark 'COVIDClean,' as applied to the identified services, merely describes a characteristic of services," an examining attorney wrote in an Aug. 20 refusal. "Specifically, that applicant is managing the quality of cleaning services that will clean and disinfect surfaces and buildings to remove the coronavirus and prevent the transmission of the virus causing the SARS-CoV-2 pandemic."

Still other applications have been rejected because an applicant failed to prove that it was using the mark in commerce. In a July 23 refusal, an application for "Coronavirus Outbreak" was rejected because the so-called specimen of use only showed an image of the term "digitally superimposed" onto a T-shirt — meaning it hadn't actually shown the mark in action.

"The Trademark Office scrutinizes specimens of use strictly and the standards have become tougher due to a flood of questionable, if not outright fake, [specimens] from China," said Brooke, the Holland & Knight attorney.

"Even applicants that may be trying to use a COVID mark as a true source-identifier are going to have to come up with material that clearly demonstrates use of a brand," he said.

In some of the early rejections, attorneys at the USPTO have even directly expressed concern about potentially deceptive uses of "COVID-19" and "coronavirus" amid the pandemic.

In a July 17 office action dealing with an application to register "COVID VAX" as a trademark for vaccines, an examining attorney demanded more information about the supposed products, including whether they will "prevent infection by the virus known as SARS-CoV-2."

"The relationship of applicant's goods to the COVID-19 pandemic is likely to affect the purchasing decision of a significant portion of relevant consumers because the ability of the goods to help prevent contracting COVID-19 or to treat COVID-19 is highly desirable for consumers," the examining attorney wrote.

And since no pharmaceutical company has yet developed or secured approval for such a vaccine, the USPTO warned the applicant about trying to secure a trademark application for that kind of product.

"If the specimen of use shows the applied-for mark used with goods that make unproven claims regarding coronaviruses and COVID-19, registration may be refused on the basis the applied-for mark includes deceptive matter," the examining attorney wrote.

Even with all those early refusals, experts stress that some COVID marks will likely be approved in the months ahead.

In an Aug. 8 office action, for instance, an examining attorney said that "COVID-19 Golden Warrior Family" could be registered as a trademark for charity services as long as the brand owner disclaimed any rights to the term "COVID-19" by itself.

"Trademark law recognizes that brand owners are entitled to use words in their generic or merely descriptive sense within trademarks incorporating other words," said Catherine M.C. Farrelly, a partner at Frankfurt Kurnit Klein & Selz PC. "The USPTO just requires the owners to disclaim exclusive rights in those particular words, apart from in the context of their trademarks as a whole."

--Editing by Jill Coffey and Brian Baresch.

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