March 27, 2023

Volume XIII, Number 86


March 24, 2023

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100% That’s My Trademark: Common Terms Can Be Source Identifiers Under The Right Circumstances

A trademark is any word, phrase, symbol, design, or combination of these things that identifies a single source for certain products or services. Trademarks identify the source of certain products or services, provide legal protection for a name or brand, and can help owners guard against counterfeiting and fraud.  In order to qualify for trademark protection, trademarks must meet certain threshold requirements, and protection may be withheld for a variety of reasons. In some cases, widely or commonly used words, phrases, or slogans that are used or appear generally in connection with a wide variety of products or services, including those that express ordinary or familiar sentiments, don’t meet the registration requirements established by the Lanham Act for federal trademark registration purposes. This “failure to function as a mark” rejection is common for household goods or clothing because the trademarks are perceived as not being associated with a single source or distinguish the brand from other uses. Slogans, such as JUST DO IT! or I’M LOVIN’ IT, may face a more challenging road to protection, particularly for clothing, because the mark may be used in an ornamental or informational manner and not sufficiently identify a single source or brand.

In a recent ruling, the well-known singer Lizzo successfully overcame a “failure to function” trademark rejection issued by the United States Patent & Trademark Office (USPTO) for a phrase popularized by Lizzo as an opening lyric of her 2017 song “Truth Hurts” – 100% THAT BITCH. The application, identifying clothing items, is one of eight filed by Lizzo, LLC for a wide variety of goods, only some of which have been subject to a similar “failure to function” rejection. The USPTO initially rejected registration on the basis that the mark was commonly or widely used by many different parties for a variety of products, and evidence was presented in favor of the rejection, suggesting that the phrase had entered into general public usage.

Ultimately, despite not having coined the original phrase, but being instrumental in popularizing the mark by including it in song lyrics, Lizzo successfully overcame the rejection by arguing that a vast majority of the uses of the mark referred to, paid homage to, or were otherwise identified or associated with Lizzo, as well as presenting evidence of other federal trademark registrations held by well-known musical artists that were inspired by song lyrics (THE OLD TAYLOR CAN’T COME TO THE PHONE RIGHT NOW and LOOK WHAT YOU MADE ME DO – Taylor Swift; CALL ME MAYBE – Carly Rae Jepson). This successful decision issued by the Trademark Trial and Appeal Board of the USPTO is the culmination of a journey that started in 2019, with a series of rejections issued by the USPTO along the way, and came about because Lizzo was able to present evidence that consumers encountering that phrase would associate the identified goods (clothing) with her and her music to the exclusion of all other potential uses our sources. Even though evidence showed that third parties have used the phrase ornamentally on clothing, that was “outweighed by references in most of those uses to Lizzo,” the Board said. The TTAB was ultimately persuaded that, despite the fact that 100% THAT BITCH was a common expression, consumers would be more likely to associate that phrase with Lizzo than any third party, and that consumer impression cannot be ignored in those circumstances. This decision will likely pave the way to a successful registration for many of her other pending federal trademark applications.

This precedential decision by the TTAB is important for several reasons: It provides significant support for and shows a path for the registration of phrases popularized by celebrities who’ve created a strong association between the mark and their identified goods and services, even if a proposed mark might otherwise be considered by the public to be ornamental or too commonplace to act as a unique source-identifier. The decision is also instructive for trademark owners by offering some guidance on how the TTAB currently views “failure to function” trademark rejections, and offers some guidance about the nature and extent of evidence that may be required to overcome such a rejection by presenting evidence showing third-party usage of the mark in a manner that recognizes the source of the mark, or the consumer perception of the mark is with a single source as opposed to a more generalized slogan or phrase that is widely used by a variety of third parties in a diffused manner. While each case must be evaluated on its own merits, this decision will be beneficial to trademark owners when seeking to protect words, phrases, or slogans that have found their way into general commercial usage but still are generally associated with a single source.

© Polsinelli PC, Polsinelli LLP in CaliforniaNational Law Review, Volume XIII, Number 37

About this Author

Matthew J. Smith, Polsinelli, Patent Licensing Lawyer, Portfolio Determinations Attorney

Matthew Smith is passionate about helping clients protect their intellectual property. He concentrates his practice on providing clients counsel across a wide spectrum of issues, including:

•    Licensing

•    Custom software development

•    Hosting

•    Consulting

•    Procurement

•    Intellectual property joint development ventures

•    E-business and intellectual property matters