Quarterly International Ip Law Update

• Jurisdiction: United States,Federal,European Union
• Author: David Tseng
• Publication year: 2020
• Citation: Vol. 45 No. 2

Quarterly International IP Law Update

David Tseng

Dorsey & Whitney LLP

Mariana Noli

Noli IP Solutions PC

Leaf Williams

Reichman Jorgensen

CORONAVIRUS AND BAD-FAITH TRADEMARKS

As the terms "Covid-19" and "coronavirus" become constant reminders of the deadly pandemic that has shut down the economy worldwide, providers of goods and services relating to COVID-19 are susceptible to counterfeiters and free-riders who seek to exploit consumer trust in certain brands.¹ There are also many who seek to repurpose the terms by applying for trademarks for words related to COVID-19. As others have reported, the USPTO and other trademark offices across the world have received a flood of coronavirus-related trademark applications on a wide range of goods and services, including apparel, charities, medical treatments, and food/beverages.²

Given the generic nature of the terms, most of these registrations are doomed to fail in certain categories of goods and/or services because it is unlikely that a registrant will be able to establish a link between the terms and the applicant's goods and services. Since trademark law is aimed at protecting consumers, the use of COVID-related marks in relation to certain goods and/or services (such as the international classes covering pharmaceuticals and medical goods) would almost certainly be categorized as descriptive and require the applicant to provide evidence to establish secondary meaning to successfully secure a registration. Trademark Examiners will likely determine that terms like COVID-19, COVID, and CORONAVIRUS do not serve as identifiers of sources of goods and/or services, nor are they related to treatment, and may consequently refuse to register these words as trademarks. This is important for trademark applicants in the U.S., who must show that the mark is used in commerce or demonstrate a bona fide intent to use the mark in commerce.³

Coronavirus-related marks may also face rejections in trademark offices that prohibit bad-faith trademark filings. Typically reserved for applicants who maliciously attempt to register a mark owned by another, many bad faith provisions in foreign jurisdictions encompass public welfare concerns that can be used to reject trademarks that seek to take advantage of the coronavirus crisis. This is unlikely to present an issue in the United States, because barring offensive marks could create tension with the First Amendment,⁴ and U.S. Trademark law does not have a specific bad-faith bar to registration. While Section 2 of the Lanham Act generally prohibits registration of a mark that "[c]onsists of or comprises immoral, deceptive, or scandalous matter[,]" it is unlikely that coronavirus-related marks that seek to exploit the coronavirus crisis, however distasteful, would be prohibited under the scope of allowable trademarks as defined by the Lanham Act. However, jurisdictions around the world differ in their approaches to bad-faith and nuisance trademark applications.

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For instance, bad-faith trademark applications have been especially frequent and problematic in China. In response, a law addressing such marks was passed and went into effect in November of 2019. Under the new law trademark examiners are obligated to review applications for bad faith, applications filed without intent to use will be dismissed, and those who file the applications may be cited and fined. The Chinese National Intellectual Property Association ("CNIPA") issued draft guidelines in February 2019 regarding what constitutes "bad faith." The types of marks that will be rejected include marks that are widely recognized by the public or already famous, marks that are filed with no intent to use, and marks that are repeatedly filed with an improper purpose...