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The Covfefe Kerfuffle and the Rush to Register Trending Terms

Posted in Mixed Bag of Nuts, Trademarks, USPTO

While many of us are working our way through the flood of thought-provoking analysis of Matal v. Tam, I’m taking a break with some lighter fare, namely, covfefe. In case you missed it, the viral non-word “covfefe” was born out of a supposedly meaninglessly typo (perhaps a misspelling of “coverage”) in one of President Trump’s early morning tweets (alternatively, some suggest that covfefe has a secret meaning known only by a “small group” of officials–stay tuned!)

Mere hours after President Trump’s tweet came the predictable flurry of opportunistic trademark applications.  For example, only 3 hours after the tweet appeared, the first “covfefe” application was filed for COVFEFE COFFEE for various coffee-related goods.

As of now, there are 32 applications pending at the USPTO to register a mark containing the word “covfefe.”  Although many of them are filed with an intent-to-use basis, there are also some interesting applications that claim actual use in commerce. For a couple examples, see the following:

  • COVFEFE for an odd variety of goods including “Party favor gift boxes sold empty”; “Nylon flags”; “Swimming floats”; and “Christmas tree ornaments.”  The specimen of use is an Amazon.com product page showing six empty “Covfefe” treat boxes for the bargain price of $99 plus $4.49 shipping.  (You would think some treats would be included for shelling out over a hundred bucks!)
  • COVFEFE for “sandwiches” by the applicant Seattle Biscuit Company.  The specimen is humorous but also a bit disconcerting — it is a photograph of a restaurant’s “specials” menu for various types of biscuits, most of which sound delicious except the “Covfefe” biscuit, which is described only as “???” for 10 bucks. Not sure if I would be adventurous enough to try that mystery biscuit.

As we’ve written before (for example, here and here), it is common to see a rush to register trending or viral terms. But such efforts are usually unsuccessful and often arise from a misunderstanding of trademark law, perhaps the thinking that merely filing the first application would confer exclusive rights over a popular term. Trademark registrations are not simply awarded to whomever is the quickest to file an application. Among the many requirements for registration, there are two hurdles that most often block the “trending term” applications.

First, registration requires that the applicant demonstrate actual use in commerce, i.e., use of the applied-for mark in connection with the sale of goods or services. This of course requires that the applicant have the capacity (and willingness) to operate a business to make such sales. Many trending-term applications die after the applicant fails to submit a proper statement of use and specimen of use.

Second, the applied-for term must function as a trademark, i.e., it must point uniquely to the applicant as the source of the applicant’s goods or services. This is a particularly difficult showing in the trending-term context as such terms are inherently used by many third parties. This hurdle blocks many trending-term applications. The USPTO frequently concludes that such trending terms are merely ornamental or merely convey an informational message, and do not function as a trademark that points to the applicant as the unique source.

In addition, as a practical matter, the viral popularity of a certain trending term is typically short-lived and tied to some recent event or circumstance, rather than being tied to the applicant’s goods or services–thus such popularity is unlikely to provide sustained commercial benefit to the applicant. Overall, rushing to adopt and register a trending term is usually not the best branding strategy, both as a legal and practical matter. What do you think?