Coronavirus Legal Issues Around the World, Part 7: COVID-19 Related Trademarks

Screen shot by Bri

For the last three or so months, our China lawyers have been confronted with a host of legal issues related to the coronavirus. This should not be surprising because China was the seminal coronavirus epicenter. For the past two months or so, our Seattle lawyers have been working on a host of legal issues related to the coronavirus. This too should not be surprising because Seattle was the initial U.S. coronavirus epicenter. For the past month or so, all this has become true for our Spain lawyers as well, as Spain too became an epicenter and a few weeks ago went into a full lockdown as well. Our Los Angeles, San Francisco and Portland lawyers have also in the past few months been hit with a slew of coronavirus related legal matters.

The coronavirus has and will continue to impact all societies and economies and this has meant our law firm has been seeing and dealing with the same sort of legal issues in all the countries in which we work. This sameness of legal issues around the world has led us to create a cross-border multi-disciplinary legal team to assist companies with their legal issues arising from or related to the coronavirus, using the knowledge and experience our lawyers have gained in one jurisdiction to determine best practices in the other jurisdictions.

In this series of posts, we’ve been discussing the legal issues our lawyers in China, the United States, and Spain have been confronting, with the goal of making this blog a repository of information on coronavirus law and especially on how to handle legal matters that have arisen due to the coronavirus.

In Part 1, we focused on employment law issues because those were the first issues we saw and those are the issues that continue to arise most often. In Part 2, we looked at force majeure “in real life.” In Part 3, a couple of our international trade lawyers analyzed how coronavirus is impacting tariffs and duties in the short term and how we see it impacting tariffs, duties and global trade in the future. In Part 4, one of our insurance coverage lawyers discussed key insurance coverage matters  stemming from COVID-19 because a massive number of companies have or will have coronavirus insurance claims and insurance coverage lawsuits. In Part 5, we discussed how the coronavirus is giving nearly free license to foreign manufacturers to provide bad product, counterfeit product, or no product at all and this is especially true of the products most needed to fight against the virus: surgical masks, N95 masks, ventilators (really anything PPE), and cleaning products and how overseas product procurement and IP have never been at greater risk. In Part 6, we discussed how the United States Trade Representative (USTR)  is seeking comments on how it could adjust or eliminate tariffs to help the United States in fighting the coronavirus. In this Part 7, we discuss the registering of trademarks related to the coronavirus and the Chinese hero-doctors who sought to expose the Chinese government’s initial (and far too long) silence about it.

Creative—if not always classy—minds are not taking a break during the COVID-19 emergency, as evidenced by the flurry of coronavirus-related trademark applications filed in the last few weeks at the United States Patent and Trademark Office (USPTO). At the onset, we must note that some of these applications involve serious commercial activity. For instance, GeneSystems, Inc. has applied to register the trademark CORONACHECK (Serial No. 88839404), for “diagnostic testing kits for the rapid detection of coronavirus antibodies”.

Unfortunately, most of the marks in question do not involve medicines or charitable activities. These include CORONAVIRUS SURVIVOR (Serial Nos. 88836091 and 88830548), CORONAVIRUS INFECTED (Serial No. 88836107), FXCK CORONAVIRUS (Serial No. 88835992), and WARNING MY RIDE IS SICKER THAN THE CORONAVIRUS (Serial No. 88838161). (That bumper sticker will look real nice next to your Coexist one or Seahawks helmet decal.)

These attempts to capitalize on a tragedy of global proportions raise obvious ethical questions. Leaving that aside for the moment, in at least some cases these applications will face some legal obstacles that may result in their denial.

First, there is the question of actual use. In the United States, trademark applicants must show that the mark “is in use in commerce” (15 U.S.C. § 1051(a)(3)(C)) or “a bona fide intention… to use a trademark in commerce” (15 U.S.C. § 1051(b)(1)). This means that coming up with a great idea while waiting for Netflix to boot up during confinement isn’t enough to secure trademark rights. To register a trademark, an applicant must demonstrate that they have good faith plans to use said mark. While some applicants may in fact be able to show that, it’s safe to assume some of the budding entrepreneurs being “inspired” by COVID-19 do not having anything remotely resembling a business plan.

Another problem for at least some applicants concerns the distinctiveness of their marks. At this moment, “coronavirus” and “COVID-19” are being used at a higher frequency than perhaps any other terms in history. Moreover—and to the extent worldwide production capacity permits—we may soon see a slew of coronavirus-themed products. Under these conditions, can these trademarks truly serve to distinguish one applicant’s “I Survived Coronavirus” T-shirts from those of others? In fact, there are competing applications for some of the marks.

At least the applicants won’t have to worry about Section 2(a) of the Lanham Act (15 U.S.C. § 1052), which prevented registering  “immoral or scandalous” trademarks.  Less than a year ago, in Iancu v. Brunetti (No. 18–302, 588 U.S. ___), the United States Supreme Court found that this prohibition violates the First Amendment. Writing for the majority, Justice Kagan took issue with how the Lanham Act “allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety”.

The U.S. is not the only country dealing with coronavirus trademarking issues. In China, the National Intellectual Property Administration (CNIPA) has been rejecting applications to register the trademarks 火神山 (Huoshenshan) and 雷神山 (Leishenshan) — the names of two hospitals in Wuhan purpose-built to combat COVID-19. CNIPA has also been striking down applications for trademarks referring to Dr. Li Wenliang, “China’s hero doctor” “credited with being the first medical professional to sound the alarm on the Wuhan coronavirus weeks before he contracted the illness himself and died.” These denials have been made under Article 10(8) of the Trademark Law, which prohibits trademarks of that which may be “detrimental to socialist morals or customs, or having other unhealthy influences.”

On the one hand, it makes sense to keep a close check on applications for marks such as 文亮医生 (Dr. Wenliang). No one wants an unscrupulous person to set up a fraudulent charitable foundation bearing Dr. Wen’s name, or for that matter to start profiting by hawking T-shirts bearing his likeliness. However, there is probably a parallel concern with how the use of imagery relating to someone viewed by many as martyr who spoke up against the Chinese government’s attempt to cover-up the COVID-19 outbreak. In fact, one of the rejected applications was for the trademark 文亮知先 (Wenliang Knew First).

In addition to this treatment of politically sensitive terms, it will be interesting to see how CNIPA handles applications that are made along the lines of the ones we are starting to see in the United States. It’s reasonable to assume that CNIPA will not hesitate to deploy Article 10(8) if anyone tries to register something like 新冠幸存者 (Coronavirus Survivor). No Justice Kagan there to express concerns about messages that defy a society’s sense of decency or propriety.

It also bears mentioning that some countries, including China, are allowing applicants to request fast-tracked examinations of their trademark applications for goods and services related to coronavirus prevention and treatment. This fast-tracking has shockingly reduced timelines for getting from filing to securing the trademark, and is definitely something that should be explored in whatever country you are seeking to secure your mark.