DALLAS/FORT WORTH214.614.6999 DENVER720.863.4012 HOUSTON713.936.9620 SAN ANTONIO210.890.4684 WYOMING307.226.2066

COVID-19, CBD, and Trendy Trademarks

Author: Blaire Farine

Entrepreneurs and business owners must stay relevant, and it is unsurprising that business brained individuals will attempt to create new brands and services that keep up with current news cycles. However, as notable new events happen such as COVID-19, trademark applications flood into the United States Patent and Trademark Office (USPTO) to try and monopolize on trending topics. It is difficult for “trendy” trademarks to demonstrate the “intent to use” required for a trademark, or actually use the trademark in commerce. It is highly unlikely for trademark applications to proceed to registration without significant hurtles if that application is filed in a wave with many like it.

Typically, the USPTO analyzes trademark applications under categories of arbitrary or fanciful, suggestive, generic, or descriptive. The issue with “trendy” trademarks is that they are generic, or not capable of distinguishing the goods from one company to another, or descriptive, in that the mark merely describes the goods and services that are applied for. If you are interested in applying for a trademark, it is essential to complete a comprehensive search to ensure that there are no existing similar trademarks out there that already exist. When trademarks are created and applied for in response to a news cycle, it is extremely difficult to register because of the abundant amount of similar applications filed simultaneously.

COVID Trademarks

A cursory search of the USPTO Trademark index yields hundreds of “COVID-19” live trademark applications, and it is only July. Over seven identical word mark “COVID-19” trademark applications already exist, some in the same classes, others in different classes. A science company is attempting to trademark the words “COVID-19” for non-medicated cleansers. Another individual filed the word and symbol trademark for “COVID-19” for card games. The word marks range in goods and services from apparel to car displays to printed historical pamphlets. Hundreds of other similar trademark applications exist, such as “I’VE BEEN COVID-19 TESTED,” “COVID-19 IMMUNE,” “FLATTEN COVID-19,” “I SURVIVED COVID-19,” and “TOGETHER WE SURVIVED COVID-19.”

It will be difficult to say how the USPTO will treat these trademark applications, as they were all recently filed in the past couple of months, filed as 1(b) intent to use, and have not been assigned to an examiner. One tactic used by applicants is to include a disclaimer of the right to use “COVID-19” apart from the mark. Most likely, many COVID-19 related trademark applications will receive Office Actions containing a variety of rejections. The USPTO may find them to be “merely descriptive,” as they merely describe the goods and services covered by the trademark. They may also be generic, because related COVID-19 companies will be selling similar products. With the overwhelming number of COVID-19 trademarks being filed at the same time, “confusingly similar” rejections may also arise with other priority and confusion issues.

CBD Trademarks

Another recent problematic “trendy” trademark comes within the CBD wave in the United States. The influx of products containing cannabidiol, or CBD flooded not only the consumer market, but also the USPTO. There are over fifteen hundred active CBD related trademark applications in the USPTO system. In reviewing abandoned trademark applications, one the most common rejections is for “no bona fide intent to lawfully use in commerce.” The rejection stems from the goods and services offered, and the Examiner found that they are unlawful under the federal Controlled Substances Act because they are derived from marijuana and not hemp (discussed below). Another common rejection is “merely descriptive” in that the use of the word CBD in the mark merely describes an ingredient or characteristic of the applicant’s goods. The Examiners also commonly requested more information about the makeup of the CBD products, and a disclaimer of the right to use “CBD” apart from the mark. Finally, the “likelihood of confusion” rejection is overwhelmingly common due to the number of applications in the same class that all are CBD related, are confusingly similar, and have related goods and services.

Not only were the trademarks “merely descriptive” of the applied for goods and services, the USPTO enforced new legal hurtles to registration. To qualify for federal trademark/service mark registration, the use of a mark in commerce must be lawful. Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (stating that “[a] valid application cannot be filed at all for registration of a mark without ‘lawful use in commerce’”);TMEP §907. The USPTO Examination Guide 1-10 pertains to the review of CBD related trademark applications that may face further registration issues. In 2018, the federal government passed the Farm Bill, which removed hemp from the definition of a controlled substance. As CBD is considered hemp, the USPTO can no longer refuse registration for CBD related substances based on unlawful use in commerce. However, the USPTO still refuses registration on applications that list ingestible CBD products, such as gummies, as goods because they contain certain added CBD not allowed by the Food Drug & Cosmetic Act. To be compliant with federal law, only CBD that is hemp-derived can be used in the applied-for goods and the application must specify the goods contain less than 0.3% THC.

In summary, if you are interested in registering a trademark it is best to avoid news cycle topics and trends, and complete a comprehensive search prior to filing your application to ensure there are no other similar existing registrations or applications.

Nothing in this article is intended to be considered legal advice. Anyone interested in applying for a trademark should contact an experienced attorney. Please do not hesitate to reach out to Kearney, McWilliams & Davis, PLLC .