Analysis

No, Seriously, Don't Try To 'Trademark' Coronavirus

Law360 (March 18, 2020, 5:43 PM EDT) -- A rush of misguided trademark applications for "COVID" and "coronavirus" has already begun, replaying a bizarre legal phenomenon in particularly tasteless fashion.

Trending terms from news and pop culture are routinely followed by a flood of applications at the U.S. Patent and Trademark Office, filed by opportunistic applicants who think they can lock down exclusive rights on something that's captured the national conversation.

Only this time, it's not a viral presidential typo or a Super Bowl moment — it's an ongoing pandemic that threatens millions and has ground daily life to a halt around the globe.

"This isn't about lightweight entertainment," said Julia A. Matheson, a trademark attorney at Hogan Lovells. "It's about people's lives."

As of Wednesday, more than a dozen applications have been filed at the USPTO seeking to register trademarks involving "COVID" or "coronavirus."

One filed by a New York company wants to register "Coronavirus Survival Guide" as a trademark for "magazines in the field of survival, protection, medicine and pandemics." Another, filed by a California man, aims to register "We Cured COVID-19" as a mark for both apparel and "providing information in the field of medicine."

For trademark lawyers, the pattern is predictable.

Back in 2017, when President Donald Trump accidentally tweeted the word "Covfefe," it was followed by 42 separate attempts to register it as a trademark. After the Philadelphia Eagles ran the famous "Philly Special" trick play in Super Bowl LII, 10 such applications were filed.

Just three days after the Boston Marathon bombing in April 2013, four applications had already been filed to register "Boston Strong" — the rallying cry for the city in the wake of the attack. Eventually, seven more were filed.

"Depending upon how you look at it, it reflects the best and worst of the capitalist ethos and desire to get rich quick from widespread trending events," Matheson said.

It also reflects a deep misunderstanding of how trademark law works.

For starters, U.S. trademark law doesn't simply reward whoever is quickest to file a piece of paper with the government. Applicants must show that they have a bona fide intent to use the term on a particular set of goods and services — something most "coronavirus" applicants are unlikely to do.

"It's a get rich quick scheme, but like most of these schemes, they fail," said Eric Ball, a trademark attorney at Fenwick & West LLP. "Trademark law doesn't support the warehousing of marks. You have to actually use the marks to get rights."

One other small problem: Terms like "COVID" are, for the most part, incapable of functioning as trademarks in the first place, made so by the very attribute that attracted the applicants.

By its nature, a trending term has been widely used by countless third parties. How, then, can it somehow uniquely identify an applicant as a source of goods?

"These applications are usually filed directly by individuals who are not familiar with trademark law," said Susan Neuberger Weller, the head of the trademark practice at the firm of Mintz Levin Cohn Ferris Glovsky and Popeo PC. "It is very unusual for an experienced trademark lawyer to assist with the filing of these types of applications."

Luckily, the examining attorneys at the USPTO are more than equipped to deal with such applications. Not a single one of the dozens of "Covfefe” or "Boston Strong" applications was ever approved.

But what is usually a trivial phenomenon for trademark lawyers is decidedly less so this time around.

"There is a real danger that unscrupulous individuals could use such marks to falsely represent themselves as 'charitable' organizations raising funds to help those in need," Weller said. "These types of organizations always exist, but in an unprecedented time of crisis such as we face now, the opportunity for fraud is even greater."

--Editing by Adam LoBelia.

For a reprint of this article, please contact reprints@law360.com.

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