Irene Calboli, professor of law at Texas A&M University School of Law, has written a new empirical article reporting that "the COVID-19 pandemic has led to a veritable tsunami of trademark applications" for COVID, QUARANTINE, SOCIAL DISTANCING, and other pandemic-related terms. Indeed, Calboli concludes that trademarking of COVID-related terms is unusually rampant, even when compared to past tragedies and disasters such as 9/11, Hurricane Katrina, and Ebola. "Ultimately," Calboli writes, "probably only the HIV/AIDS pandemic can be compared with COVID-19 in terms public awareness, societal fears, and strong emotions," and even "the beginning of the HIV/AIDS pandemic did not see a similar rush to trademark filings" that we have seen with COVID. While several practitioners have also noted the large number of applications filed for these terms in the past month, Calboli's paper is the first to survey these applications comprehensively and in detail.
The full article, Trademarks and the COVID-19 Pandemic: An Empirical Analysis of Trademark Applications Including the Terms “COVID,” “Coronavirus,” “Quarantine,” “Social Distancing”, “Six Feet Apart,” and “Shelter in Place, can be downloaded on SSRN. The data are included as an appendix to the paper. The article will be published in the Akron Law Review's IP Symposium Issue as part of the Annual Akron Law IP Scholars Conference. (The other scholars publishing in this year's IP issue are Margaret Chon, Robert Merges, Kristen Osenga, and Sharon Sandeen.)
I interviewed Professor Calboli on her findings. The interview is transcribed in this post. To follow along, here is one of the many beautiful tables and informational graphics in the article, included with Calboli's permission.
As you can see, Calboli reviewed a total of 782 trademark applications filed through the end of the year 2020 and presently under examination at the U.S. Patent & Trademark Office. Importantly, a large majority (542 applications) are filed under the Section 1(b) "bona fide intent to use" filing basis, rather than based on actual current use. These applicants will eventually need to convert their applications by proving they are actually using the marks in commerce. So they are in a sense betting on what they will be able to sell and on what will be popular in future.
CAH: Wow, this an amazing paper. It's so comprehensive. I am fascinated by what it reveals about trademarks, as well as about society. The most common term by far was the term COVID itself. You found 519 filings for COVID. The distant second was QUARANTINE, with 121 filings. But CORONAVIRUS meanwhile represented only 54 applications. Why might this be? Why not more for coronavirus itself?
IRENE CALBOLI: This could be because COVID has become the more common referent in public conversation, not "Coronavirus." It's also possible that applicants thought of "coronavirus" as too generic.
CAH: Around 209 filings were for actual medical products, like face masks, hand sanitizers, and items related to vaccines. Some of them make what look to me like health and safety claims, such as COVID SHIELD for air filters, COVID-19 PROOF for antibacterial cleaning products, and CORONAVIRUS FREE for medical compression tights... Can you speculate on the health and safety implications of this? Should a trademark be allowed for a mark like COVID-19 PROOF for cleaning products?
IRENE CALBOLI: I don't think the use of these terms for medical products is necessarily problematic. For example, a mark like COVID-ONESWAB registered for swab tests seems fine to me, so long as it's truly for a test and is effectively able to identify the source of the products. The problem is when you start to see filings for marks like COVID-19 PROOF. Nothing can be one hundred percent "COVID PROOF"! The Section 2(a) deceptive matter bar should "kick out" and prevent registration of some of the more misleading marks. These applications should be barred as deceptive, since they can mislead consumers. Applicants seem to try to use these signs to market products as "safe" when this simply cannot be proven at all. Hopefully, the examiners will be tough on those sorts of marks. It will be interesting to see what happens as more office actions are written on these applications. It will be especially interesting to review these office actions.
CAH: A great number of applications were for unrelated products. For example, you found applications for COVID SAUCE for coffee or QUARANTINE& CREAM for body cream. And a ton of filings (around 200) are actually for merchandise and promotional products, T-shirts, hat, pins, and the like. At the Akron Scholars event, you said,
“The million dollar question is why you would want to call your beer COVID, when we all want to move on. But I don’t think people think through that. And we already have a beer called Corona."
Can you speculate on that? Do consumers really want to buy a HERO COVID-19 2020 T-shirt or a SIX FEET APART IS SMART lapel pin? If not, why are people still filing these?
IRENE CALBOLI: I think this dataset is (unfortunately) the perfect example of a case study on the phenomenon of "registering sensation." People swarm in to register a buzz word like COVID or QUARANTINE or SIX FEET APART. They somehow think they can make money by registering these names and selling products carrying these names. But they don't really seem to think through this. And they don't seem to understand what the proper functions of trademarks are, or what type of signs can, and should, actually be protected. They just want to register new and hot buzz words. Some applicants write in the description of goods/service in the applications language such as "I hope I will sell products with this mark" or "I hope others will not be able to use it." The reality is that people seem to be running to register trademarks that are very likely to be rejected, because they may be descriptive, generic, or misleading, and in turn are unlikely to make the applicant any profits. In fact, these applications are a cost for the applicants who have to pay the fees.
CAH: Thank you for all your time, and for such a wonderful read. I really enjoyed this and look forward to seeing it in print!