Intent To Use
A weekly newsletter provided by Garbis Law, LLC
COVFEFE Trademark Anyone?
When President Donald Trump sends out a Tweet, you’re never quite sure what to expect. On May 30th, he sent out the following tweet and the world had a field day trying to figure out what he meant by the word “covfefe.”
As is often the case with words or phrases that end up going viral, a number of new trademark applications have been filed with the United States Patent and Trademark Office (“USPTO”) containing the word COVFEFE. As of today, there have been a total of 26 trademark applications filed:
The applications cover a variety of goods from apparel to pet toys to beer to coffee and even to investment advice. It is likely, however, that the majority of these applications won’t reach registration due to a failure (or lack of intent) to operate as a trademark or other potential conflicts.
Operating as a Trademark
Individuals who file these types of applications based on terms that have gone viral are often just looking for a payday and have no intention of actually using the mark they have filed for.
In order for a term to operate as a trademark, it must be used as a source identifier. It is not enough to merely put the mark on goods and call it a trademark. For example, many of these applications cover the use of the COVFEFE trademark on t-shirts or other apparel. When filing a trademark application for clothing, it is important to differentiate how the trademark will be used. You need to remember, that a trademark is a source identifier and not a “decoration.”
More often than not, the USPTO rejects an application for failure to provide a specimen properly using the trademark. Instead of showing the trademark as a source identifier, a specimen often shows the trademark as “ornamental.” If all you are going to do is slap a name, logo, or slogan on the front of a shirt and go to trademark it, chances are your application will get rejected.
Lack of Intent to Use
The majority of these applications have been filed under an “intent to use” basis. The United States Trademark Act, Section 1(b) states that an intent to use application may be filed by a person “who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce.” When submitting a trademark application, a party must sign a statement affirming this bona fide intent to use. We discussed similar issues in a recent post about Beyonce’s trademark application. The question here becomes whether or not these applicants actually had a “bona fide intention” to use the mark, or did they simply seek potential rights for a payday?
There are a number of other issues that could arise during the USPTO’s examination of the applications. These applications will not be examined for another 3-4 months, but I’ll be sure to update you all as the USPTO starts responding.
Trademark applications are done for a flat fee, which includes a trademark search, opinion as to the likelihood of registration, and filing the application with the trademark office.
Have you come up with a great name or slogan, but haven’t opened up shop yet? That’s OK. You can still reserve your trademark with an “intent-to-use” application. Find out more HERE.
If you already have a registered trademark, you will need to renew it every once in a while so it does not expire. If you stop using your trademark to identify the goods/services it protects, it no longer operates as a trademark.
Selling your business or need to transfer your trademark to a different entity? This is called an “assignment,” which is recorded with the USPTO.
Let’s face it, no matter what you do, there may be others who copy you. Unfortunately, you may also find yourself on the wrong end of a cease and desist letter. I can help you identify whatever rights you may have and provide an opinion on how you should proceed. Depending on your situation, sending a cease and desist to an infringer, or responding to an infringer can all be handled. Additionally, I can help you negotiate a settlement agreement with the other party.
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Anastasios G. Garbis
Registered Patent Attorney
I am a registered patent attorney and spend my time consulting entrepreneurs on how to protect their businesses through the use of different forms of intellectual property. My experiences through my time as an attorney and involvement in various business ventures in the restaurant and hospitality industry have helped me relate to the needs of small businesses and entrepreneurs.