The United States Patent and Trademark Office's (USPTO) Trademark Trial and Appeal Board (TTAB) recently issued a precedential decision clarifying the circumstances under which an artist can obtain a trademark registration for a phrase that is both commonly used and simultaneously associated with a particular artist.
In In re Lizzo LLC, the TTAB reversed the refusal to register the trademark “100% That Bitch” to Lizzo LLC for use on clothing. The Examining Attorney refused registration on the ground that the phrase is a common expression that would not be perceived by consumers as a trademark. However, the TTAB held that consumers would associate the phrase with the artist Lizzo, rather than as a commonplace expression.
Under Sections 1, 2 and 45 of the Trademark Act, registration must be refused when the subject matter of a proposed mark fails to function as a trademark. Commonly understood expressions, such as DRIVE SAFELY or THINK GREEN, fail to function as trademarks and are denied registration because they do not identify the source of goods or services. However, trademark examination has been inconsistent in its application of this principle to trademarks comprised of song lyrics (for example, CALL ME MAYBE®, or THE OLD TAYLOR CAN’T COME TO THE PHONE RIGHT NOW®). In this case, the Examining Attorney argued that consumers will view “100% That Bitch” as a “message of self-confidence and female empowerment used by many different entities in a variety of settings.” Therefore, the Examining Attorney concluded that the mark would be understood for its message rather than as a source indicator and refused registration.
The TTAB disagreed and found that the record did not establish that the phrase “100% That Bitch” was so commonplace that it failed to function as a trademark. The decision noted that Lizzo did not originate the phrase but elevated it to a more memorable status with the release of her single “Truth Hurts.” The record did not disclose use of the term prior to the 2017 release of that song. The TTAB further found that the evidence of record showed that consumers encountering the phrase “100% That Bitch” on items of clothing associate the term with Lizzo and her music, even where the goods were offered by third parties. The evidence demonstrated that while the expression conveys a message of female empowerment and strength, it is not used in general parlance and does not convey a common social or informational message in such a way that consumers would not perceive it as indicating the source of the goods.
In reversing the Examining Attorney’s refusal, the TTAB emphasized that there is no per se rule for or against registrability of song lyrics or phrases as trademarks. However, it found that the totality of the evidence undercut a finding that the phrase 100% That Bitch was merely a commonplace expression. The TTAB looked to the timing and nature of the public usage to determine if the term pointed to a particular source. If all of the uses of the phrase reference a particular applicant, then consumers may understand the phrase as a source-indicator. This decision clarifies the standard for assessing the trademark significance of popular expressions and should improve the consistency of examination in this area.
Practice Considerations
This decision suggests certain practical considerations for applicants seeking to register a phrase as a trademark including:
- Searching to confirm that the phrase has not already been used by others in public forums;
- Filing early to prevent others from popularizing the phrase; and
- Providing reasons why the term or phrase is connected to you in marketing materials to support the application.
If you have any questions regarding this change or how it may impact you or your trademark filings, please contact Andy I. Corea, Managing Partner and Intellectual Property attorney, at (203) 772-7739 or acorea@harrisbeachmurtha.com.
This alert was prepared with help from law clerk Lindsey M. McComber.
