Trademark Review Places COVFEFE Decision in the Top 7

It is hard to forget the moment when then Candidate Trump tweeted late one night “Despite the constant negative press covfefe.” This tweet sparked a nationwide debate about the word “covfefe.” Not only did this word spark a debate, but it also caught the eye of some opportunists. One of those opportunists was John E. Gillard who applied to register the mark #COVFEFE (in standard characters) for “hats, t-shirts, wristbands as clothing; hoodies; jackets; ties as clothing; tops as clothing” in International Class 25. Unfortunately for Mr. Gillard, the Trademark Office refused registration of his #COVFEFE application on the ground that the term fails to function as a trademark.

Although a trademark applicant must declare that the mark is being used on all of the applied for goods, the Trademark Office requires an example of only one good displaying the mark to support a registration. Mr. Gillard submitted a rubber wristband, polo shirt, and baseball hat displaying the mark #COVFEFE as his specimens.

The Trademark Office argued that COVFEFE had no meaning when it was used by then Candidate Trump, but took on a meaning to refer to Donald Trump because of the extensive media and Internet coverage the Tweet received. The Trademark Office also offered evidence of the term COVFEFE used in an ornamental way on a variety of goods. All of this evidence suggested that consumers would understand Mr. Gillard’s use of #COVFEFE as commentary of then Candidate Trump and not as an indicator of source.

Just because a term has a known meaning does not remove it from the universe of terms available as potential trademarks. In fact, dictionary terms are commonly adopted as trademarks and service marks. The beauty about the Trademark Act is that any matter (words, sounds, smells, environments, touch, designs, colors, shapes, and taste) can function as a trademark.

Common laudatory phrases or statements that are ordinarily used in business or in a particular trade or industry, and slogans or other terms that are merely informational, are examples of claimed trademarks that may fail to function as such due to their nature. And how the mark is used on the good is not dispositive of whether the word functions as a trademark. Although placement of the proposed mark across the front a t-shirt (for example) is often used by the Trademark Office as evidence that the mark is merely ornamental and fails to function as a trademark. In this case, Mr. Gillard was smart and placed in the #COVFEFE mark in a small font size on the polo shirt and baseball hat in locations where consumers expect to see trademarks.

Nevertheless, the inclusion of the “#” symbol in the mark drawing primarily sunk Mr. Gillard’s application. The Board found that the hashtag symbol is understood as a piece of metadata used to identify or facilitate a search for a keyword or topic of interest. In this case, consumers would understand that #COVFEFE promoted the discussion of then Candidate Trump’s Tweet. Mr. Gillard may have stood a better chance of success if he would have applied for COVFEFE without the hashtag.

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