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Thinking about Using Trademarks to Capitalize on the COVID-19 Pandemic? Think Again.



Over the past few weeks, many entrepreneurially-minded people have filed trademark registration applications with the U.S. Patent & Trademark Office in apparent attempts to cash in on the current global health crisis. Example marks from this influx of applications include: I HEART COVID-19, COVID-19 INFECTED, #CORONAVIRUS, WARNING MY RIDE IS SICKER THAN THE CORONAVIRUS, and CORONAVIRUS: MADE IN CHINA. The goods and services identified for these marks range widely from t-shirts and other apparel to magazines, music recordings, educational materials, pharmaceutical compositions, and even tax planning services. While some of these filings may be tied to a sincere business intent, many have been criticized as being distasteful and perhaps even a waste of time and government resources.

Some of these applications to register a trademark may indeed result in federal trademark registrations but the majority will likely fail for any of a number of reasons. For example, many of the applicants probably have the mistaken belief that the first person to file a trademark registration application is the “winner” in terms of owning the mark but, unlike patents, this is simply not the case with trademarks. Rather, a trademark applicant must demonstrate that they are actually using the trademark in commerce, e.g., presently selling products bearing the mark, or have a bona fide intent to do so to qualify the mark for registration.

Also, the trademark must be distinctive. That is, the mark must identify to consumers that the owner of the trademark is the source of the goods or services offered. Indeed, a basic tenet of trademarks is to actually inform the public as to who is behind the good or service bearing the mark. The owner may not intend or even wish for this to be the case, especially if others may find the mark offensive. Further, the mark must not merely describe the associated goods or services. If someone were able to successfully register the wordmark CORONAVIRUS for a specific product or service, for example, it could prevent competitors from using that term legitimately in describing or promoting their own products or services.

But what if your desired trademark is for a legitimate business interest? For example, what if you are considering CORONA-GARD for a new brand of anti-virus masks? Or what if you would like to explore a fanciful term like COTAPRO for a Corona Tax Amnesty Program consulting service, which term is formulated from the words “Corona Tax Amnesty Program” but has the advantage of PRO at the end to indicate “Professional” or suggest skilled, experienced service to the consumer? Marks such as these may be found to effectively identify the source of the goods and services and, as such, may lead to successful trademark registrations.

If you are considering a trademark that references the current pandemic, e.g., including the terms COVID or CORONAVIRUS, we highly recommend that you first consult with a trademark practitioner before filing an application. The trademark attorneys at Miller Nash Graham & Dunn would be happy to advise you with regard to the best course of action for using, and possibly seeking to register such a mark.

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