#COVFEFE Fails to Function as a Trademark for Clothing, says TTAB

The Board affirmed a refusal to register the mark #covfefe (in standard character form) for "hats; T-shirts; wristbands as clothing; hoodies; jackets; jerseys; ties as clothing; tops as clothing," ruling that the term fails to function as a trademark for the identified goods. The Board found that the word “covfefe” has been widely used in public dialogue and on merchandise "in a non-source identifying manner, and it does not identify Applicant as the sole source of clothing identified by that term." In re Gillard, Serial No. 87469115 (January 11, 2019) [not precedential] (Opinion by Judge Christopher Larkin).

The term "covfefe" was born on May 31, 2017, when President Trump tweeted "Despite the constant negative press covfefe." The tweet went viral and engendered much discussion of the strange word "covfefe." On that same day, Applicant John E. Gillard filed the subject application to register "#covfefe."

“It is well settled that not every designation that is placed or used on a product necessarily functions as a trademark for said product and not every designation adopted with the intention that it perform a trademark function necessarily accomplishes that purpose.” D.C. One Wholesaler, Inc. v. Chien , 120 USPQ2d 1710, 1713 (TTAB 2016) (citing In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)). “The critical inquiry in determining whether a designation functions as a mark is how the designation would be perceived by the relevant public.” Id.

TMEP Section 1202 lists 15 grounds for refusal under the rubric "failure to function." Here, Examining Attorney Mark S. Tratos invoked the "informational matter" version, maintaining that #COVFEFE is "a social, political, or similarly informational message that is understood and commonly used as a reference to President Trump, typically expressing either support or disapproval of the President." Moreover, he asserted, consumers are accustomed to seeing the term (both COVFEFE and #COVFEFE) used by many different sources on a variety of goods and services, mostly in an ornamental manner.

Applicant Gillard, appearing pro se, contended that COVFEFE is a unique, coined term entitled to strong trademark protection. He professed his intention to "deal with" other users of his mark.

The Board turned to the record evidence to discern the public's perception of the term COVFEFE. The evidence showed the immediate "whirlwind of public discussion" regarding the term "covfefe," in newspapers, on the Internet, and in other media. Subsequently, media references to the term continued, and a Google search displayed a "wide array of memes" employing the term. In addition, the terms COVFEFE and #COVFEFE almost immediately began appearing on merchandise, including (of course) hats, t-shirts, and mugs, as well as personalized license plates, coffee, ale, balloons, beach balls, and so on.

The Board recognized that COVFEFE is a "sui generis nonsense word" that does not fit into the usual categories of non-source identifying terms. However, it is more like familiar expressions such as DRIVE SAFELY that have failed to function as marks. The Board agreed with the USPTO that COVFEFE is often used to convey a political view, but some uses do not have an express or apparent political reference.

Although Applicant Gillard was correct that COVFEFE does not have a true meaning and is thus not laudatory or merely informational, the Board deemed the term to be "in the nature of a verbal Rorschach test, in which users and observers of the word can project onto it any meaning they wish, and, as a result, it has been used ubiquitously" in several non-trademark senses. The Board pointed out that "[t]he more commonly a phrase is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark."

The use of the hashtag symbol with COVFEFE is "particularly probative" because hashtags "are commonly employed to facilitate categorization and searching of topics of public discussion."

[T]he record makes it clear that #COVFEFE has served that purpose in promoting discussion of the mystery word in the President’s tweet, the public will not understand #COVFEFE to identify one, and only one, source of clothing, and to recognize Applicant as that source, when it appears on Applicant’s goods.

Moreover the widespread third-party use of COVFEFE and #COVFEFE on a variety of goods, including clothing, shows that consumers are not likely to view the term, as applied to Gilland's goods, as a source indicator pointing uniquely to him.

Finally, turning to Applicant Gilland's specimens of use (see photos above), the Board noted that Gilland has displayed the applied-for mark "in a non-ornamental manner that is conventional for the display of [a trademark], but that is not dispositive of the issue of whether the term actually functions as a mark." D.C. Wholesaler 120 USPQ2d at 1716 ("I ♥ DC" fails to function as a trademark, despite appearing on hangtags for the goods).

Given the non-source identifying nature of the word “covfefe,” and its admitted widespread ornamental use on merchandise, Applicant’s display of #COVFEFE in the manner of a trademark is insufficient to make it one. D.C. One Wholesaler, 120 USPQ2d at 1716.

And so the Board affirmed the refusal under Sections 1, 2, 3, and 45 of the Lanham Act.

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TTABlog comment: Too bad this mark didn't reach publication. Perhaps the President would have opposed? Or at least tweeted out some pithy remark.

Text Copyright John L. Welch 2019.