By: Mariam Jaffery
In May 2017, a typo in one of President Trump’s Tweets created an immediate viral reaction worldwide.[1] The endless wave of memes led many people to attempt to cash in on the trend, by filing applications to trademark the term.[2] Among these individuals were John E. Gillard, who filed an application to use #COVFEFE on items of clothing. Last month, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office issued a ruling that prevented Gillard from being able to register the mark, on the grounds that it failed to function as a trademark.[3] In reaching this conclusion, the Board first considered how the mark would be perceived by the public.[4]
To analyze this, the opinion referenced various uses of “covfefe” in news articles, tweets, and memes.[5] Using this evidence, the Board concluded that even though the word had lacked a clear meaning, and fell outside the traditional categories of items that failed to function as trademarks,[6]it still could not be registered.[7] The opinion concluded that its use was too common to function as a mark because “covfefe” was used in a number of contexts, particularly as a “social, political, or simply informational message in support or disapproval of President Trump.”[8]
Additionally, the use of a hashtag in Gillard’s trademark application did not help his argument.[9]The Board concluded that the hashtag supported the notion that #COVFEFE served a purpose of “promoting discussion of the President’s tweet,” and that the public would not understand the term to identify “one source of clothing” when it appeared on the Applicant’s products.[10]
The Board’s ruling does not have precedential value, but is consistent with its past decisions on similar issues: usually “trending” words are unable to be trademarked under “failure to function” grounds.[11] This is because a trademark’s purpose is to be a source identifier, allowing a person in commerce to identify the origin of a product.[12] For a popular viral term, the public would not be able to identify one Applicant as the source of the good when it appeared on apparel. For the general public, the implication of this case (and decisions like it) are that courts are vigilant in blocking trademark applications that do not have the proper intent to use. Moral of the story? Before wasting hard-earned time and money, make sure that you properly intend to use a mark to identify your brand, and not simply to take monetary advantage of a Twitter trend.[13]
[1]‘Covfefe’: Trump Invents New Word and Melts Internet, BBC News(May 31, 2017), https://www.bbc.com/news/world-us-canada-40104063.
[2]Sandra Edelman, #COVFEFE: It’s a Thing, But Not a Trademark,JDSupra(Feb. 4, 2019), https://www.jdsupra.com/legalnews/covfefe-it-s-a-thing-but-not-a-trademark-11021/.
[3]Id.
[4]In Re Gillard, Case No. 87469115 (Jan. 11, 2019), https://thetmca.com/files/2019/02/Gillard.pdf, at *11 (citing D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1713 (TTAB 2016) (“The critical inquiry in determining whether a designation functions as a mark is how the designation would be perceived by the relevant public.”).
[5]Id. at *11-20.
[6]Id. at *27 (citing In re Hulting, 107 USPQ 2d 1175, 1177 (TTAB 2013) (stating that #COVFEFE does not fall into the categories of “common laudatory phrases or statements that would ordinarily be used in business or in a particular trade or industry,” or “slogans or other terms that are considered merely informational in nature.”).
[7]Id. at *26.
[8]Id.
[9]SeeBill Donahue, Trump’s “Covfefe” Term Isn’t a Trademark, USPTO Rules, Law360 (Jan. 29, 2019), https://www.law360.com/articles/1123330/trump-s-covfefe-term-isn-t-a-trademark-uspto-board-rules.
[10]Id. at *28.
[11]See Tom Kulik, Trumped By ‘Covfefe’: 3 Reasons Why Trademarking Trending Names and Catchphrases Is a Bad Idea, Above the Law(Aug. 14, 2017), https://abovethelaw.com/2017/08/trumped-by-covfefe-3-reasons-why-trademarking-trending-names-and-catchphrases-is-a-bad-idea/?rf=1.
[12]Id.
[13]See KevinTM, COVFEFE Trademark Applications Likely To Be Rejected, Kevin Haynie – Trademark Attorney: Blog(June 18, 2017), https://www.iregistertrademarks.com/covfefe-trademark/.
