In late March, we advised that a large number of COVID and CORONA VIRUS trademark applications had been filed at the USPTO. In fact, more than 200 such applications have been filed, and it’s likely not one of them will be approved for registration. We explained the terms are not able to function as a trademark. But, last week, Dr. Fauci, the U.S.’s leading infectious disease expert, is the subject of what will be the next wave of failed trademark attempts. While I love the creativity of the mark WHAT THE FAUCI?, it too doesn’t stand a chance of being approved for registration? Why? Well, the most likely reason the USPTO will give is that there would be a false connection created in the minds of consumers between the goods offered by the applicant and Dr. Fauci.
What is False Connection?
When a trademark includes matter that would suggest an association with someone so well-known that consumers would presume a connection, and that connection is not apparent in the trademark application, the trademark is refused under Section 2(a) of the Trademark Act. In the WHAT THE FAUCI? application, there is no apparent association between the trademark applicant and Dr. Fauci. Dr. Fauci has attained celebrity status in the past few months such that his name would be immediately recognizable by consumers of the trademarked goods. To overcome such an objection, the applicant would need to secure a consent declaration from Dr. Fauci, which is highly unlikely.
What is a Surname Refusal?
There are two other FAUCI applications, that in addition to a false connection refusal will also receive a refusal for merely a surname, as there is no other matter in the mark. To circumvent the surname refusal, the applicant would need to address four factors:
- Whether the surname is rare;
- Whether anyone connected with the applicant uses that surname;
- Whether the term has any recognized meaning other than a surname; and
- Whether the term has the “structure and pronunciation” of a surname.
Even if the applicant could successfully argue all of the factors, it would still need to secure a consent declaration from Dr. Fauci, which they will likely not be able to secure.
Conclusion
In the Trademarkabilities® Masterclass we teach attorneys and paralegals strategies for how to handle Office Actions just like this one so if your clients are acting before they think through their branding strategies (or if they get a surname refusal anyway), you will be prepared for how best to counsel them through the response. If you want to elevate your trademark practice and have the confidence to better serve your clients and grow your trademark practice, then enroll now. Or, you can join our mailing list, and download our free e-guide “5 Tips for Trademark Success at the USPTO.”
Stacey C. Kalamaras is the founder and lead instructor of Trademarkabilities®, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be confident and effective practitioners before the USPTO. Stacey started Trademarkabilities to share her passion teaching the law with the next generation of lawyers and help them become practice ready lawyers. Contact us at: hello@trademarkabilities.com.
Stacey is also a seasoned trademark attorney and currently works in-house as Senior Counsel for a multi-national candy company. She previously owned her own solo trademark practice, which she scaled and sold. She has been recognized by her peers for her outstanding knowledge and service in intellectual property law.