The Importance of Being First – Fashion and Trademarks for Coronavirus/COVID-19

| Justin Culbertson, Ph.D.Peter Law

About 40 years ago, marketing strategists Al Ries and Jack Trout offered the world a way to think about making a brand memorable. The best way to be remembered is to be first into your prospect’s mind representing a clear perception.[1]

We often see ads for the newest or latest and greatest thing. People and consumers love what is new. Marketers know it too. That’s why the next “new” thing can be such a big business. Is the product always new? Maybe, maybe not. But it gets our attention. And if it is new, it gets more than our attention. It gets remembered.

One of the “new” trends is based on the current pandemic – coronavirus/COVID-19. To date, records from the U.S. Patent and Trademark Office (“USPTO”) show that since early March to mid-April, more than 200 trademark applications have been filed for variations on the words “coronavirus,” “COVID-19,” “pandemic,” and “shelter-in-place.”

Examples of Recently Filed Marks

As of mid-April, more than 20 trademark applications have been filed for variations of “I survived coronavirus”, “I survived COVID-19”, “coronavirus survivor” and “I beat the coronavirus.” The applications cover a variety of goods and services, such as clothing, charitable fundraising, and more.

Established brands have also sought federal protection for such marks. The makers of What Do You Meme? filed an application on March 20 to register the trademark “Social Distancing. The Game.” Vice Media, the digital conglomerate, filed a trademark application for the phrase “Shelter in place.” Similarly, NBC Universal filed an application for the phrase “Together starts here,” which is a variation of its “Comedy starts here” and “Music starts here” slogans. One New York Company wants to register “Coronavirus Survival Guide” for magazines in the field of survival, protection, medicine and pandemics. [2]

Individuals have also filed federal applications to register their marks. A California man filed an application for “Love in the Time of Coronavirus” for apparel and entertainment. Another person is trying to register “We Cured COVID-19” as a mark for both apparel and providing information in the field of medicine. Yet another individual has filed an application for “COVID-19 Baby” in connection with onesies.

Will These Marks Ever be Granted Federal Registration?

A trademark serves to identify the source of particular goods or services. Typically, the USPTO and courts analyze the mark and the product under four categories: (1) arbitrary or fanciful; (2) suggestive; (3) descriptive; or (4) generic. Generally, arbitrary, fanciful and suggestive marks are considered stronger than those that are descriptive. Generic words are not capable of distinguishing the goods of one company from those of another, and are not federally registerable.

It is likely the PTO will initially take the position that most of these “marks” are ornamental slogans, and do not function as trademarks. Consumers will view the slogans as decorative, and not as an indication of the source of the products. If the applicants are unable to overcome this objection by the PTO, they will not be granted a registration for their marks. Only with careful attention to marketing and appropriate use of the brand, will trademark applicants be able to persuade the PTO that their slogan functions as a trademark.

It will be interesting to see how many registrations the USPTO issues for these coronavirus/COVID-19 related marks. It is quite possible that the prosecution of the applications will last longer than the pandemic. Given the initial rush to the USPTO and the uncertainty of registration, it may be very difficult for any one company to be “first” into the minds of consumers.

Editor: Catherine Holland

[1] Jerry McLaughlin, The Importance of Being First, Forbes, (last visited April 16, 2020)

[2] Nick Penzenstadler, Brands, T-shirt makers’ line up to trademark coronavirus pandemic – USA Today, (last visited April 16, 2020)