April 2020

For all of us, this past month has been unlike any other both at home and 'at work.' I hope this message finds you and your family safe. We are managing here, working remotely, adapting to the current reality and preparing for the future; just six weeks ago I was planning travel for conferences and launching my new book. Those now seem like a distant memory. I suspect that you, like me, are trying to focus on some of the silver linings - home-cooked family dinners without worrying about rushing off to a meeting or sports practice, planting flowers in the yard, time to clean out the garage, and many other projects I'd been putting off for years.

Despite the unique times, at EMP&A we have been busy helping clients manage and strengthen their brands - filing trademark applications, navigating disputes, and more. We have been watching the amazing work done by so many clients, pivoting to online fitness classes, virtual real estate showings, and much more. I have been moved repeatedly to learn of the incredible actions from so many businesses to help healthcare workers, take care of the clients and employees, or pivot to new business models or delivering their services in new ways. Several clients are making masks and other products for frontline healthcare and emergency workers, others are feeding them or raising money to support them, and I've never been more proud to work with and aide such clients.  In fact, I made a video about it.  

Of all the videos I've ever recorded (probably more than 100) this was the first time I got emotional; many of the small businesses impacted dramatically by this coronavirus COVID-19 crisis are friends, community, clients, and even family. 

Adapting to the COVID 19 Crisis for Small Businesses
Businesses Adapting to COVID-19 Crisis

As I noted in my message a few weeks ago, I firmly believe that  together, as colleagues, friends, entrepreneurs, and a community, we will get through this crisis and we'll come out stronger on the other side. If there are any questions you have about business or legal ramifications, pivoting, or your just want to chat, please don't hesitate to reach out. 

COVID-19 Impact on USPTO Deadlines and Filings

Did you know that due to the pandemic, many filing deadlines can be extended at the USPTO and late fee penalties may be waived? Listen to details in this video or see  https://www.erikpelton.com/uspto-covid-19/.

USPTO Changes and Extensions for Trademark Filers Due to COVID-19
USPTO Changes and Extensions for Trademark Filers Due to COVID-19

Core Values for your Business - 
Even More Important in a Crisis

I  wrote recently about some tips for managing a brand in a crisis; the first tip was to stay try to your core values. At EMP&A, we have always posted our core values for all to see. Core values are even more important to review and build upon in times of stress and crisis.  This goes for any business - the reason you have core values is that they are to be unwavering, and to help guide you in difficult times. Now is those difficult times, so if you haven't already done it I recommend to you refresh your memory and that of your staff regarding your core values.

Our firm's core values

Coronavirus trademark applications are
mostly a waste of money

Over the last month, dozens of trademark applications have been filed with the USPTO featuring "Coronovirus" or "Covid-19" or "Social Distancing" in the mark.  Nearly all of them will be rejected, and are a waste of time and money and resources.  Why will these filing be refused? They are unlikely to ever get registered or approved by the USPTO because they:
  • almost certainly fail to function to indicate the source of an actual product or service, which is the real job of a trademark;
  • feature widely used messages, which are barred from registration under TMEP Sect. 12.02.04(b);
  • are likely to be used ornamentally on the front of a shirt or mug or sticker and don't truly identify who makes the product; and
  • violate the public interest by using a term or phrase that is common.
Even if the reasons above do not disqualify the applications, nearly all of them would be at risk of facing a "likelihood of confusion" refusal with one that was filed earlier (if any get registered).

Note that this is not to say that it is impossible to have real brands and creative marks arise from this pandemic; it is. For example,  SOCIAL DISTDANCING could be a creative mark for online dance instruction;  CORONAPOCALYPSE could be a creative name for a podcast featuring telescoped words.

Past examples from situations when numerous applications were filed featuring terms that became part of the social and cultural lexicon are illustrative:
  • BOSTON STRONG saw about a dozen trademark application filings. None were registered.
  • COVFEFE tweet from the President yielded more than three dozen trademark applications filings at the USPTO. None are registered.
If you were thinking about filing to try to register one of these marks, I suggest you don't waste your time and money. The USPTO filing fees will almost certainly be a waste and they are not refundable. Furthermore, these filings are taking USPTO resources away from legitimate applications as they still need to be reviewed by an examiner just like any other application.

Finally, even if I'm wrong and some of these marks becomes registered, good luck enforcing them. One of key functions of a trademark registration is to enable the owner to stop others from using something confusingly similar. I cannot foresee a court entertaining a serious argument to try to enforce one of these common phrases to stop someone else; attempting to profit in such a manner from this pandemic is unlikely to be well received by any court.

Check out a few of the many amazing clients doing great things in these challenging times:

If there are any topics or issues you would like to see covered here, let us know!

This publication has been prepared for the general information of clients and friends of the firm. It is not intended to provide legal advice with respect to any specific matter. Under rules applicable to the professional conduct of attorneys in various jurisdictions, it may be considered advertising material.

© 2020 Erik M. Pelton & Associates, PLLC.