Multiple persons applied to register the word COVFEFE as a trademark in the USA on May 31, 2017. It is rare that there are so many applications for the same trademark filed all on the same day. Some of the 9 applications filed on May 31st even cover the same or similar set of goods: various types of clothing.
Some of the applications were improperly filed. Two of the applications failed to state a basis for their trademark claim: actual use or proposed use. Some of the applicants paid a $225 TEAS Plus fee and others paid the $275 TEAS Reduced Fee.
The danger of using the TEAS Reduced Fee application is that applicants will improperly describe their goods and they will select an incorrect class for their goods. The reduced fee application is only for experts who want to claim goods and services that are not in the goods and services manual and want to argue with an examiner. If your lawyer does this, consider changing lawyers, unless you have a completely new product or service that is not in the manual.
What does Covfefe mean?
The one application filed by a lawyer, for Barley Forge Brewing Company, provided a translation for the word COVFEFE:
- The wording COVFEFE has no meaning in a foreign language
COVFEFE Trademark Search
||docs: 9 occ: 20
|| Actual Use
||Men’s, women’s, children’s and babies’ clothing, namely, shirts, sweatshirts, T-shirts, long-sleeve shirts, short-sleeve shirts, tank tops, sleeveless shirts, blouses, shorts, polo shirts, collared shirts, swimwear, swim suits, skirts, dresses, slacks, jeans, pants, trousers, suits, sweaters, socks, scarfs, suspenders, bathrobes, gloves, belts, ties, cravats, hoodies, hooded sweatshirts, vests, jackets, sport jackets, outer jackets, wind resistant jackets, coats, overcoats, sport shirts, gym suits, gym shorts, sweat bands, sleepwear, pajamas, one-piece garments for children, leisure suits, loungewear, dress shirts; undergarments, namely, underwear, under shirts, boxer shorts, underwear tops, men’s underwear, thongs, bras, sport bras, panties, shapewear panties, girdles, lingerie, camisoles, hosiery, tights, leggings; footwear, namely, shoes, sandals, flip-flops, sneakers, boots, slippers, clogs, loafers, boat shoes; headwear, namely, hats, caps, in Class 25
|| Proposed use
|| Proposed use
||Beer (Barley Forge Brewing Company, LLC)
|| Proposed use
||Advice relating to investments (Covfefe LLC)
|| Proposed use
||Clothing, namely, arm warmers; Clothing, namely, athletic sleeves; Clothing, namely, crops; Clothing, namely, folk costumes; Clothing, namely, khakis; Clothing, namely, knee warmers; Clothing, namely, thobes; Gloves; Pants; Scarves; Shirts; Shoes; Socks; Underwear; Belts; Belts for clothing; Bottoms as clothing; Combinations; Gloves as clothing; Head wraps; Headbands for clothing; Hoodies; Hoods; Jackets; Jerseys; Leather belts; Mantles; Short sets; Shoulder wraps for clothing; Tops as clothing; Wrist bands as clothing; Wristbands as clothing
|| Proposed use
|| Proposed use
||Coffee and coffee substitutes in class 30; Coffee-house and snack-bar services in class 43
||TEE SHIRTS; SWEATSIRTS; HATS (incorrectly claimed class 002)
||Hats; T-shirts; Wristbands as clothing; Hoodies; Jackets; Jerseys; Ties as clothing; Tops as clothing
Was COVFEFE used in Interstate Commerce?
At least one of the applications is based on actual use since May 31, 2017.
- Did a retailer sew on a COVFEFE branded tag sell and the golf shirt to a customer who walked in the door that day?
- Or did he sell it online and sell it “in interstate commerce?”
- Did he sell all of the listed goods to out of state purchasers?
- Does use in commerce matter anymore since the ADD A ZERO case?
I think that the USPTO still cares whether an actual use application is based sales made in interstate commerce. It may all depend on to whom and where the items were sold. Here is a summary of a recent Federal Circuit court decision regarding sales made in interstate commerce Christian Faith Fellowship Church v. adidas AG, 120 USPQ2d 1640 (Fed. Cir. 2016):
- Reversing the TTAB, the CAFC ruled that the sale of two hats at the Church’s bookstore to an out-of-state purchaser constituted use in commerce of applicant’s mark ADD A ZERO.
- The Board had granted the petition of adidas AG for cancellation of two registrations owned by the Church for the mark ADD A ZERO, in standard character and design form, for “clothing, namely shirts and caps,” finding that these sales were de minimis and insufficient to show use that affects interstate commerce.
- The CAFC observed, however, that “when a general regulatory statute bears a substantial relation to commerce, the de minimis character of individual instances arising under that statute is of no consequence,” and Congress has the power to regulate it under the Commerce Clause. Gonzalez v. Raich, 545 U.S. 1, 17 (2005), quoting United States v. Lopez, 514 U.S. 549, 558 (1995).
- The CAFC pointed out that the Church was not required to present evidence of “an actual and specific effect that its sale of hats to an out-of-state resident had on interstate commerce.
- Nor did it need to make a particularized showing that the hats themselves were destined to travel out of state.”
COVFEFE is properly branded on this golf shirt
Trademark Application Priority
The Big Question is: Who will get priority and get their applications approved?
- The first to file?
- All of them?
- None of them?
- The one based on actual use?
- The one’s whose applications are properly filed and not confusing with the previously filed applications?
- Will there be an interference proceeding? There hasn’t been an interference proceeding in decades.
The trademark application with the lowest serial number will usually have priority: Serial Number: 87469115
Internet Transmission Date: Wed May 31 02:34:46 EDT 2017. However, the applicant messed up the basis of his application. The applicant has not specified a filing basis and he may also have an issue with the description of one or more items in his list of goods: Hats; T-shirts; Wristbands as clothing; Hoodies; Jackets; Jerseys; Ties as clothing; Tops as clothing. So he will get an office action and have to correct his application. If he fails to respond, his application will go abandoned.
- (a) Whenever an application is made for registration of a mark which so resembles another mark or marks pending registration as to be likely to cause confusion or mistake or to deceive, the mark with the earliest effective filing date will be published in the Official Gazette for opposition if eligible for the Principal Register, or issued a certificate of registration if eligible for the Supplemental Register.
- (b) In situations in which conflicting applications have the same effective filing date, the application with the earliest date of execution will be published in the Official Gazette for opposition or issued on the Supplemental Register.
- (c) Action on the conflicting application which is not published in the Official Gazette for opposition or not issued on the Supplemental Register will be suspended by the Examiner of Trademarks until the published or issued application is registered or abandoned.
[37 FR 2880, Feb. 9, 1972, as amended at 54 FR 37594, Sept. 11, 1989]
The applications for beer and Advice relating to investments will likely both be approved without conflict because their goods and services are not confusing with the rest of the applicants.
- If conflicting applications have the same effective filing date, the application with the earliest date of execution will be approved for publication for opposition or for the issuance of a registration on the Supplemental Register. 37 C.F.R. §2.83(b). An application that is unexecuted will be treated as having a later date of execution.
- Occasionally, conflicting applications will have the same date of filing and execution. If this situation occurs, the application with the lowest serial number will have priority for publication or issuance. When determining which serial number is the lowest, the examining attorney should disregard the series code (e.g., “76,” “77,” “78,” “79,” or “85”) and look only to the last three digits of the six-digit serial number that follows.
Which COVFEFE Trademark Applications will Probably Be Opposed?
One of the applications claimed to have used the COVFEFE trademark on all of the following goods since May 31, 2017:
Men’s, women’s, children’s and babies’ clothing, namely, shirts, sweatshirts, T-shirts, long-sleeve shirts, short-sleeve shirts, tank tops, sleeveless shirts, blouses, shorts, polo shirts, collared shirts, swimwear, swim suits, skirts, dresses, slacks, jeans, pants, trousers, suits, sweaters, socks, scarfs, suspenders, bathrobes, gloves, belts, ties, cravats, hoodies, hooded sweatshirts, vests, jackets, sport jackets, outer jackets, wind resistant jackets, coats, overcoats, sport shirts, gym suits, gym shorts, sweat bands, sleepwear, pajamas, one-piece garments for children, leisure suits, loungewear, dress shirts; undergarments, namely, underwear, under shirts, boxer shorts, underwear tops, men’s underwear, thongs, bras, sport bras, panties, shapewear panties, girdles, lingerie, camisoles, hosiery, tights, leggings; footwear, namely, shoes, sandals, flip-flops, sneakers, boots, slippers, clogs, loafers, boat shoes; headwear, namely, hats, caps, in Class 25
This application will probably be opposed if it doesn’t get a spot audit for specimens on all of the goods claimed. The applicant submitted only one specimen, as shown above.
In some recent spot audits, the half of all applicants could not provide specimens for each and every good claimed. They were given the option of cutting back their list of goods to the ones that they had specimens for. Applications are sometimes opposed on the basis of fraud on the PTO for claiming use on goods that the applicant had not sold at all.
What Happens with Fraudulent Trademark Applications?
It depends on whether an opponent can prove an intent to deceive.
- If so, then entire registration is kaput based on fraud.
- If not, then only the “unused” product is knocked out.
Keep in mind that only one fraud claim has been upheld by the TTAB since the 2009 Bose decision. It was a TTAB case involving the mark NATIONSTAR.
It would be nice if everyone was honest when they checked the boxes in their application, under penalty of perjury. Alas, a large segment of applicants are not so honest when filing applications based on actual use.
Google Trends for the word Covfefe
Google trends for the word COVFEFE shot up globally on May 31st and have since almost died out.
However, COVFEFE trademark applications keep coming in. As of June 2, 2017, there was a total of 19 trademark applications for the word COVFEFE.
COVFEFE Google trends spiked on May 31st, 2017, and after a few days have died out.
We will keep you updated.