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Opportunistic Trademarks: Increased Trademark Filings in the wake of COVID

by Alexa Rose Coangelo

在过去的几个月中,美国专利及商标局收到了许多与新冠病毒相关的商标申请。这些商标申请包括各种跟新冠病毒有关系的短语,例如: “COVID”, “CORONA”和“RONA”。很多人提交这类商标申请是为了获利,但他们不懂商标注册的目的和要求。商标的作用是帮助消费者区分商品的来源。许多与新冠病毒相关的商标申请被拒绝的原因主要有三个:第一,这些商标大多没有被应用在贸易上。第二,这些商标没有帮助消费者区分商品的来源,而只有装饰作用。 第三,这些商标大部分很相像,可能会使消费者产生混淆。因此,当提交商标申请的时候,遵守商标注册的规定很重要!

Over the past few months, the USPTO has seen an influx of trademark applications related to the coronavirus. Mark applications include various phrases used to refer to the coronavirus, including “coronavirus,” “COVID,” “CORONA,” and “RONA.” A quick search in the USPTO TESS system using the terms “coronavirus,” “COVID,” and “CORONA” brings up hundreds of coronavirus related marks for goods ranging from apparel to alcoholic beverages, as well as for services ranging from business marketing consulting to financial investment advice. Some examples of the various coronavirus related marks that pop up on the USPTO TESS system include, “Coronavirus Survivor," “Corona Happens,” “COVID Clean,” “STRAIGHT OUTTA COVID,” and “Corona Kid.”[1]

The rush to file coronavirus related marks is likely due to a misunderstanding of the underlying function of trademarks and the basic requirements marks must meet to pass to registration. Trademarks are meant to help consumers distinguish the source of a particular good from that of another.[2] While many people are likely hoping to profit from the global pandemic through their coronavirus related marks, their marks likely will not be approved. In order to secure a trademark registration, the mark filer must demonstrate that the mark is in use in commerce or that they have an intent to use the mark in commerce.[3] Slapping a slogan on a single t-shirt and then filing for a trademark is not sufficient to meet the use in commerce requirement.

Many of the coronavirus related trademarks that have been filed in the past few months simply serve as what filers likely see as “catchy,” if not insensitive, logos to stick on t-shirts and hats and do not serve the required function of identifying the source of the particular good. Such slogans will likely be refused on the basis of ornamentation as they serve a merely decorative function and do not function as a mark.[4] Many of the coronavirus related marks will likely also be refused registration due to likelihood of confusion as many of the marks are similar and are for related goods.[5] For example, marks such as “I SURVIVED CORONAVIRUS 2020” for athletic apparel, “I Survived CoronaVirus” for t-shirts, beanies, sweaters and other apparel items, “I beat the Coronavirus” for tops, and “Coronavirus Survivor” for hats, shirts and other apparel items are seemingly fairly similar and are for related goods.[6]

When thinking about filing a trademark, it is important to remember the underlying function and purpose of trademark registrations and to think about the baseline requirements trademarks must meet before jumping on the bandwagon and trying to capitalize on a global event such as the coronavirus!

[1] See Trademark Electronic Search Sys. (TESS), http://tmsearch.uspto.gov/bin/gate.exe?f=searchss&state=4807:hyrr8e.1.1 (last updated July 4, 2020).

[2] See Protecting Your Trademark: Enhancing Your Rights through Federal Regulation, Basic Facts About Trademarks, USPTO, https://www.uspto.gov/sites/default/files/documents/BasicFacts.pdf (last visited July 4, 2020).

[3] See TMEP § 806.

[4] See Possible Grounds for Refusal of a Mark, USPTO, https://www.uspto.gov/trademark/additional-guidance-and-resources/possible-grounds-refusal-mark (last visited July 4, 2020).

[5] See id.

[6] See Trademark Electronic Search Sys. (TESS), supra note 1.