Even as the coronavirus pandemic spreads around the world, people and businesses are trying to gain a commercial advantage from trademarking words and phrases related to the virus and people and places associated with the epidemic. Chinese trademark officials, for example, recently announced that almost 1,000 trademark applications related to COVID-19 have been been filed and rejected. Chinese authorities are now punishing filers calling such applications “malicious” and an abuse of the trademark system. Likewise, the Korea Herald news media reports dozens of efforts to register trademarks in Korea related to the coronavirus. Examples include “CORONA KILLER,” “WCCORONA” and “CORONACOP.” Here in the US, there have been similar registration efforts in the last couple of weeks including proposed trademarks for “Coronavirus Survival Guide” in the trademark class for survival magazines and “We Cured COVID-19” for apparel.

These efforts seem insensitive and heartless — and maybe even opportunistic — amid the ongoing crisis. But these efforts are also likely to be pointless, since it is unlikely that ANY trademark related to the virus can be registered.

The key to a valid trademark registration is having a word, logo, symbol, phrase, or something similar that is used in commerce to identify a unique commercial source for a product or service in the minds of consumers. A trademark is not just a catchy phrase. Customers have to view and understand the trademark as identifying a company and as a means of distinguishing between various companies making products or providing services. Protecting the consumer from confusion is one of the main purposes of trademark law. Examples can be seen in the different trademarks used by McDonalds vs. Burger King and the ones used by automobile manufacturers Audi and Mercedes Benz. Consumers see these various marks and understand them to represent good food and fine automobiles made by the respective companies. These marks are unique and distinctive and serve as identifiers.

Furthermore, generally speaking, a trademark cannot be a common or descriptive word like “BLUE” or “WORLD” and cannot be a commonly-used symbol like a circle or a triangle. These types of trademarks are too general, generic, and descriptive. Without more, such words or phrases or symbols are not unique and distinctive enough to cause a consumer to see the word, phrase or symbol as an identifier of a unique commercial source/origin of goods or services. Finally, a trademark cannot be some word or phrase that is informational. Thus, a trademark application for “I♥NY” for coffee mugs would be rejected since the symbols relay information about the feelings and beliefs of the coffee drinker, not information about the commercial source of the coffee mug.

These are the main problems with any effort to trademark COVID-19 or CORONAVIRUS or any other words or phrases related thereto. In only a short time, these words have become common and now describe a pathogen and a pandemic. As such, in the minds of consumers, these words cannot identify a commercial source of goods or services. Furthermore, some of the proposed trademarks like “CORONACOP” or “COVID-19 SURVIVAL MAGAZINE” are merely descriptive or informational. Again, the words do not convey information about the source/origin of commercial goods or services.

The Spectrum of Trademark Distinctiveness

The USPTO evaluates trademark applications against a well-established spectrum of distinctiveness. Understanding where a proposed mark falls on this spectrum is the starting point for any trademark analysis. The spectrum runs from fanciful marks at the strongest end to generic terms at the weakest end, with arbitrary, suggestive, and descriptive marks occupying the middle ground.

Fanciful marks — invented words with no prior meaning, like KODAK or XEROX — are the strongest and most easily registered. Arbitrary marks — real words applied to unrelated goods, like APPLE for computers — are also strong. Suggestive marks require some mental leap to connect the mark to the goods or services, like NETFLIX for streaming video. Descriptive marks directly describe the goods or services and require proof of acquired distinctiveness (“secondary meaning”) before they can be registered. Generic terms — the common name for the goods or services — can never be registered.

COVID-19 and CORONAVIRUS fall at the bottom of this spectrum. They are not invented terms; they are the scientific and common names for a specific virus and the disease it causes. No amount of commercial use can transform a generic term into a protectable trademark. The USPTO expressly rejects applications for generic terms under 15 U.S.C. § 1052(e)(1), which bars registration of marks that are merely descriptive, and under the generic term exclusion more broadly.

Immoral or Scandalous Marks and the First Amendment

Some of the proposed COVID-19 trademark applications may also face rejection under the Lanham Act’s provision addressing immoral or scandalous matter. Historically, 15 U.S.C. § 1052(a) barred the registration of marks that consist of “immoral, deceptive, or scandalous matter.” The US Supreme Court, in Iancu v. Brunetti, 588 U.S. 388 (2019), struck down the “immoral or scandalous” restriction as an unconstitutional viewpoint-based restriction on speech under the First Amendment.

This means that even applications for COVID-19-related trademarks that strike most observers as offensive or exploitative cannot be rejected on that basis alone. But the generic and descriptive nature of these terms provides independent grounds for rejection that are constitutionally permissible. The USPTO does not need to rely on the scandalous-matter bar to reject “We Cured COVID-19” — it can simply find that the phrase fails to function as a trademark.

Deceptive Marks: An Additional Basis for Rejection

Some COVID-19-related trademark applications are not merely generic — they may also be deceptive. The Lanham Act prohibits registration of marks that are “deceptive” under 15 U.S.C. § 1052(a). A mark is deceptive if it contains a misdescription of the goods or services, consumers are likely to believe the misdescription, and the misdescription would materially affect a consumer’s decision to purchase.

A proposed mark like “We Cured COVID-19” for apparel is almost certainly deceptive if it implies that the clothing manufacturer has developed a cure for the virus. Consumers seeing such a mark on a product might genuinely believe a medical claim is being made, which could materially influence their purchasing decisions. Deceptive marks are absolutely barred from registration and cannot acquire registrability even through extensive use or secondary meaning.

What This Means for Legitimate Brand Owners

The flood of COVID-19-related trademark applications created noise in the USPTO’s filing system and, in some cases, friction for legitimate brand owners. Companies with existing trademarks incorporating geographic terms or words that overlap with COVID-19-related terminology may find themselves dealing with office actions or opposition proceedings filed by opportunistic applicants.

Any legitimate business that has pivoted its brand or product line in response to the pandemic — manufacturers who began producing personal protective equipment, distilleries that shifted to hand sanitizer production — should work with an experienced trademark attorney to evaluate whether new trademark applications are warranted, whether existing registrations cover the new goods, and whether any COVID-19-related trademark applications by third parties pose a risk to existing rights.

If you have questions about trademark law, contact the trademark lawyers at Revision Legal at 231-714-0100.