This following is a transcript of an episode of my Tricks of the Trade(mark) podcast. Listen here.
Any significant event in the news, or pop culture, or our lives is almost certain to generate trademark application filings. Over the years, I’ve blogged and spoken about many such cases like Boston Strong, or OK Boomer just a few months ago, or “covfefe” when the President made that strange tweet, or the polar vortex in a recent winter where I had never heard of that phrase before, and the meteorologists all started talking about the polar vortex — lo and behold there were several trademark applications filed that included the words “polar vortex.”
I’m here to tell you today that trademark applications related to the coronavirus COVID-19 pandemic are for the large part a waste of time and waste of money. In the last few weeks, there have been dozens of new trademark applications filed for things like “I survived coronavirus,” “Have a nice quarantine,” “I survived COVID-19.” Just like any other event that takes place in the news, people look to capitalize on it and to file trademarks.
There are several reasons these trademarks are almost certain to be a waste. The first is they’re probably not really going to indicate the source of a product or a service, which is the original function of a trademark, a brand. A phrase on a sticker or a T-shirt is not generally actually indicating the source of something, and fails to function as a trademark. On top of that, when it’s a common phrase that’s popular in the news, it’s even less likely to be perceived as indicating the source of something. And that use may also be ornamental.
On top of that, there’s also the general public interest in allowing those words and those phrases to be used by other people. How is one person going to monopolize use of that phrase or word for a product or service? Because a trademark registration is, in many ways, a limited monopoly to that phrase or that word for the goods and services in the registration. So there’s a public interest involved here as well.
Boston Strong is one example where after the Boston Marathon bombing, that was a particular item in the news near and dear to me, because I grew up in the Boston area, I’ve been to the Boston Marathon to watch it many times. (and I ended up running the Boston Marathon the following year to raise money for charity). So I was fairly outspoken about the fact that there were 10 or so trademark filings for the phrase “Boston Strong” filed in the aftermath. I looked up the USPTO records recently and none of those applications have become registered; they all failed. They all wasted their filing fees; they all wasted their attorney’s fees if they paid lawyers. And they wasted their time and they wasted the government’s time, because they either didn’t function as a mark, didn’t get approved, or were never properly used as a trademark.
Another similar phrase in recent history was the ‘ice bucket challenge’ that was used to raise a lot of money for charity. When that took off, there were filings to try to protect the ice bucket challenge name. I was also outspoken about that. I was quoted in multiple articles including the Washington Post. In the end, the organization withdrew the application to protect it. Because again, what would they do even if they got this registration? How would they stop somebody else from using the name or using the phrase?
That’s not to say that these ‘coronavirus’ or ‘quarantine’ words could never possibly function as a trademark. I’m sure there’s some situation where they could. But I’m telling you the overwhelming majority of them are wasting the applicant’s money, wasting the government’s time, and wasting valuable resources.
That’s my take on the coronavirus and COVID-19 trademark application filings. If you have a different take, feel free to leave a comment, message me. I’m always happy to have a spirited debate. There’s never one right answer.
I hope you’re staying safe in these challenging times.