The United States Patent and Trademark Office (“USPTO”) has been active in response to the COVID-19 pandemic. Here are a few of the highlights and relief measures, along with some related practical advice.
On March 16, 2020, the USPTO began to waive petition fees for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners in certain situations for customers impacted by the coronavirus. In a similar vein, extensions of time have been allowed to file certain patent and trademark-related documents and to pay certain required fees.
The USPTO launched a marketplace platform, Patents 4 Partnerships, to provide the public with a user-friendly, searchable repository of patents and published patent applications related to the COVID-19 pandemic. As of July 5, 2020, there are 224 inventions listed on the platform, with all inventions available for licensing.
A COVID-19 Prioritized Examination Pilot Program started to permit prioritized examination of certain COVID-19-related patent applicants, without additional fees, to allow innovators to bring important and possibly life-saving treatments to the market more quickly. To qualify, the claims of an application must cover a product or process that is subject to United States Food and Drug Administration approval for use in the prevention and/or treatment of COVID-19.
On June 3, 2020, the USPTO launched a COVID-19 Response Resource Center to provide a central hub for information about the USPTO’s efforts and other helpful information in response to the COVID-19 outbreak.
For certain trademark and service mark applications, the USPTO will accept petitions to advance the initial examination of applications for marks used to identify qualifying COVID-19 medical products and services. Additionally, the USPTO will waive the fee for such petitions.
To be eligible for prioritized initial examination, an applicant must seek registration for one or more of the following medical goods or services related to COVID-19:
- Pharmaceutical products or medical devices such as diagnostic tests, ventilators, and personal protective equipment, including surgical masks, face shields, gowns, and gloves, that prevent, diagnose, treat, or cure COVID-19 and are subject to approval by the United States Food and Drug Administration
- Medical services or medical research services for the prevention, diagnosis, treatment of, or cure for COVID-19
According to the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, such accelerated initial examination “will help to bring important and possibly life-saving treatments to market more quickly.”
While a qualifying application may also include additional related goods or services, by no means is the USPTO implying it is acceptable to file an application for “COVID” or the like.
On this point, there have been at least 143 pending applications filed between January to June 2020 with the text “Covid-19” and/or “Corona” in the mark. Only two were filed in January with a slow increase in February. March has the highest numbers of applications filed to date exceeding 55 pending, closely followed with more than 45 applications filed in April. May and June have drastically reduced filings with barely over 20 filed in May and approximately 6 in June.
Combining all possible classifications that may relate to medical advancement or management of the spread of COVID-19, there are around 40 pending applications. Indeed, the vast majority of filings are far removed from the qualifying COVID-19 medical products and services.
For example, some 60 applications have been filed in Class 25, which covers clothing, footwear, and headwear. Interestingly, Cervecería Modelo de México, S. de R.L. de C.V. Sociedad de Responsabilidad Limitada de Capital Variable, filed 7 applications in April 2020 alone under its brand name CORONA in myriad classes including Class 25.
For those thinking about filing a trademark or service mark application that would not fall within the applicable program, please note Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties. See 15 U.S.C. §1052(d). In this regard, Cervecería Modelo de México, S. de R.L. de C.V. Sociedad de Responsabilidad Limitada de Capital Variable owns 60 active registrations for some form of CORONA in the mark.
Another requirement of obtaining federal registration at the USPTO relates to descriptiveness. In particular, the proposed mark may not merely describe a feature of the applicant’s goods and/or services. Trademark Act Section 2(e)(1); TMEP §§1209 et seq.
A mark is merely descriptive under Trademark Act Section 2(e)(1) if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services. In re Gyulay, 820 F.2d 1216 (Fed. Cir. 1987).
The USPTO will undoubtedly reject many of the recently filed 140+ pending applications under Trademark Act Sections 2(d) and 2(e)(1). Applicants looking to obtain at least some return on their investment should keep these laws in mind.