On Feb 11, 2020, And Still, LLC (a private limited liability company in Massachusetts) filed a trademark application with the United States Patent and Trademark Office (USPTO) for the mark “COVID-19 VAX,” under the US serial number 88792612. If this name sounds familiar, that’s because it is. COVID-19 is the name the World Health Organization has given to the newly discovered coronavirus that was unknown before its outbreak in Wuhan, China in December 2019.
This mark has been filed as an “intent to use” application for exclusive use of the term in the vaccine industry. This means that if And Still, LLC proves within the next six months that it is using this name in commerce and the USPTO approves of the application, And Still, LLC would have exclusive use of “COVID-19 VAX” in the medical vaccine industry.
But can an applicant gain a monopoly on such a novel or descriptive term that has only recently been introduced into the world’s vocabulary? The answer, in short, is most likely no. As most trademark attorneys will point out, one of the most basic concepts of trademark law is that a term can not be trademarked if it is merely descriptive (see TMEP §§1209.01(c)–(c)(iii)). Descriptive marks, as the name implies, are marks that simply describe a product or mark, which cannot be trademarked.
Here, adding the word “VAX” (a word normally used as short hand for vaccine) to the official name of a virus is providing no function other than simply describing that the potential product or service is a vaccine for the COVID-19, i.e. the name in this application appears to be descriptive. Other industry personal, such as Robert Reading (former trademark analyst and now director at CompuMark) agrees that this mark is “likely to fail” the descriptive test to be trademarkable.
Additionally, “And Still, LLC” does not appear to be involved in the pharmaceutical, manufacturing, or medical industry. Thus, the likelihood that this company will introduce a vaccine to COVID-19 within the next six months and distribute it in commerce is extremely low. Other well known and experienced drug makers, such as Moderna, are only now just coming up with experimental coronavirus vaccines that are not guaranteed to work and may take many more months before a viable solution is found. This only further casts doubt that “And Still, LLC” will be able to use its mark in commerce in the next six months.
What we have here then appears to be the beginning of opportunistic trademark applications for a new word that is acquiring public awareness. In other words, this appears to be an example of a trademark troll application, i.e. a term for any entity that attempts to register a trademark without intending to use it and who then threatens to sue others who use that mark for financial gain.
This is not the first application that is attempting to potentially cash in or obtain exclusivity for the new coronavirus that is becoming a bigger epidemic with each passing day. A quick search through the US Trademark Electronic Search System (TESS) will reveal additional pending trademark applications such as 88774522 (WUHAN CORONA VAX), 88774534 (WUHAN CORONA MVAX), 88781934 (CORONAVAX), etc. Although these applications have been filed, the USPTO will still review the applications and may prevent them from further processing if it discovers that the applications have been filed in “bad faith” (see 15 U.S.C. §1051(b)), i.e., there must be a bonda fide intent to use the mark in commerce.
Not all applications, however, that use the “coronavirus” name appear to be descriptive or necessarily used in bad faith. For instance, the application 88790444 (CORONAVIRUS), intends to use its term for goods and services including "entertainment services in the nature of live vocal performances by a musical and vocal group." In this application, the goods and services are not used in reference to the virus or in any medical capacity, but in a more arbitrary fashion to describe a services provided in the entertainment industry.
Although trademark law is intended to shield and protect consumer's expectations and a producer’s brand, in an environment where a new term is introduced and obtaining popularity, those that intend to use it as a sword for a quick profit are likely in for a rude awakening.
Please note that image for this article was taken from Narvikk on iStockphoto.
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