Recently, Melissa Jefferson, known professionally as Lizzo, took on the USPTO in a battle to establish trademark rights to a popular lyric from her 2017, Billboard-topping song Truth Hurts. The phrase, “100% That B—h”, which Lizzo admitted was inspired by a tweet, was recently the subject of several lawsuits concerning the authorship of the work (see e.g., Jefferson v. Raisen et al., Case No. 2:19-cv-09107-DMG-MAA). Nonetheless, given the popularity of the song and phrase, Lizzo, through her company Lizzo LLC, filed Application Nos. 88466264 and 88466281 with the USPTO for use on various clothing items on June 10, 2019. The trademark-examining attorney (the “examiner”) refused each application stating that the phrase “is a commonplace expression widely used by a variety of sources to convey an ordinary, familiar, well-recognized sentiment.” After the examiner issued the final refusal, and denied Lizzo’s requests for reconsideration, Lizzo appealed to the Trademark Trial and Appeal Board (ttab).
What Is a Source Identifier?
The Lanham Act defines a trademark as a mark used in commerce or registered with a bona fide intent to use in commerce. To receive protection under the Lanham Act, the mark must function as a trademark — that is, the mark must serve to distinguish the applicant’s goods from those sold or manufactured by others. Put simply, the mark must indicate the source of the goods — known or unknown.
How the relevant public perceives the term sought to be registered is critical to determining whether a mark functions as a trademark. If a mark is perceived as “merely informational in nature” the mark is not registerable. Indeed, if a mark is a common term or phrase that the relevant public is accustomed to seeing used by various sources to convey “ordinary, familiar, or generally understood concepts or sentiments,” it is likely to fail to function as a trademark and is merely informational. One common issue, in the context of clothing, is an ornamental use rejection. Ornamental use is when a party uses a trademark in a decorative manner, or to enhance the image of the product, rather than as an identifying source of goods or services. Thus, where the evidence shows that the wording in the mark is commonly used in an informational and ornamental manner on clothing and other retail items produced and sold by others, the mark is likely to be seen for the meaning of its wording and not as a source indicator.
In rejecting Lizzo’s applications, the examiner argued the mark was not source-identifying, and instead, the mark was a message of “self-confidence and female empowerment used by many different entities in a variety of settings” (In Re Lizzo LLC, No. 88466264, 2023 WL 1507238, at *4 (Feb. 2, 2023)). Additionally, the examiner argued that Lizzo’s admitted plagiarism of the famous line undercut her application as she merely “popularized” a commonly used phrase. In support of his arguments, the examiner cited Urban Dictionary, numerous articles, and dozens of screenshots of the phrase used on clothing items unrelated to the popstar. Notably, the examiner provided numerous screenshots of the phrase being used in an ornamental manner, including several from Lizzo’s website.
In response, Lizzo argued that the examiner failed to demonstrate that the phrase was commonplace or that the public was exposed to the phrase in a widespread manner that would undercut the ability of the mark to operate as a source-identifier. In support of registration, Lizzo submitted copies of additional applications using the phrase for entertainment services and musical sound recordings that the USPTO did not reject for failure to function. Lizzo also submitted copies of take-down requests to third parties using the phrase on merchandise, as well as the responses from merchants offering assistance in policing merchandise going forward.
In reversing the examiner’s decision, the TTAB noted that the evidence cited by the examiner demonstrating ornamental use undercut his argument for refusal, as much of the evidence referenced Lizzo and her lyrics from the chart-topping single. Similarly, the remaining evidence reaffirmed the phrase’s close association with the singer, which weakened the weight of the evidence against registration. Further, the TTAB noted that the evidence did not convey a common social, political, patriotic, religious or other informational message, and when considered in the entirety of the record, found most consumers would perceive the phrase used on the goods in the application as associated with Lizzo rather than a commonplace expression. More importantly, the TTAB noted that while the term has become “widespread,” there is no evidence that the phrase was commonplace prior to Lizzo’s usage.
While not heavily discussed in the opinion, the TTAB’s ruling offers insight on how an applicant’s popularity seemingly transcends traditional trademark law. Generally, the widespread use of a phrase by many, as noted by the examiner, precludes registration. However, despite acknowledging the phrase was not an original thought, Lizzo was entitled to protection largely due to her widespread popularity that, in turn, popularized the phrase through association with her. Needless to say, this opinion should serve as a reminder to less famous trademark applicants that early registration is the best practice in preserving their intellectual property.