Lizzo, the multi-talented singer, rapper, and flutist, has recently made headlines for taking home the 2023 GRAMMY for Record of the Year but that isn’t her only recent win.
The world-famous international recording artist has also recently won a victory at the Trademark Trials and Appeals Board (TTAB) after the United States Patent and Trademark Office (USPTO) refused registration of “100% That B[****]” for clothing and clothing-related goods for failure to function as a trademark.
The USPTO refused registration on the grounds that the mark was an aspirational, inspirational and/or motivational phrase that was already widely used on clothing and clothing-related. The TTAB, on the other hand, found that the evidence showed that the phrase did in fact serve as a source indicator for the international recording artist as relates to clothing and clothing-related goods and reversed the refusal.
In June 2019, the famous singer’s trademark holding company, Lizzo LLC, filed an application for registration of the mark with the USPTO. In October 2019, the USPTO Examining Attorney assigned to the application issued an Office Action, or official USPTO notice, refusing to register the mark due to the fact that the mark was a widely-used slogan or term that conveyed an informational message.
Under the trademark laws, phrases or slogans that simply convey an informational message do not function as a trademark and, therefore, are not eligible for federal trademark registration. To support the refusal, the Examining Attorney referenced numerous clothing and clothing-related goods available for sale on various websites, including www.etsy.com and www.amazon.com, that bore the mark in question. The Examining Attorney decided that because the mark was used so widely by many different sources, use of the phrase itself as relates to clothing and clothing-related goods would not lead consumers to believe that the singer was the source of the clothing and clothing-related goods. As a result, the Examining Attorney issued a final Office Action in August 2021. Lizzo LLC filed a request for reconsideration of the denial to the application, but that request was denied on April 5, 2022.
Lawyers for Lizzo LLC appealed the denial of the application for registration with the TTAB. On appeal, Lizzo LLC lawyers argued that when you think of the phrase in question, you think of Lizzo. Her lawyers stated that the evidence relied upon by the Examining Attorney to refuse registration of the mark actually showed that third parties were using Lizzo’s goodwill and fame, as well as her image and likeness, to make money off of the phrase. They argued that the fact that so many others were selling merchandise with the mark further proved that Lizzo should be granted trademark protection to better protect her rights. Finally, Lizzo LLC lawyers made the point that the international recording artist’s whole brand conveys the message of female self-confidence and female empowerment, and she alone was responsible for making the phrase as popular as it is today. It turns out that the TTAB judges agreed.
The TTAB determined that the evidence did not show that the phrase was used generally in society or conveyed an informational message. Looking at the evidence as a whole, the TTAB found that most consumers would associate Lizzo with clothing and clothing-related goods bearing the mark. The TTAB stated that the evidence showed that Lizzo and her hit song “Truth Hurts,” which was originally released in 2017 and re-released in 2019, made the phrase in question popular and took it from a phrase that may have been “lesser known . . . to more memorable status.” Thus, the TTAB reversed the decision to refuse registration of the mark and sent the matter back to the USPTO to move forward with the application process.
The TTAB decision was a major win for Lizzo LLC and a testament to the power of having a trademark attorney in the process of registering trademarks. The trademark process can often be convoluted, complex, and complicated. There are many legal requirements to be met and the process can involve a significant amount of research, as well as legal hurdles to overcome. Although her application was denied by the USPTO Examining Attorney, her attorney was able to successfully appeal the denial to the TTAB to allow the application to move forward in the registration process.
Trademarks are an important aspect of protecting a brand and its image. Trademarks provide exclusive rights to use a particular name, phrase, logo or symbol to distinguish a product or service from others in the market. With the increasing importance of e-commerce and the rise of social media, the need for trademarks has become even more critical for artists, entrepreneurs and businesses alike.
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