Nearly four years after first filing applications to register 100% THAT BITCH as a trademark for use in connection with clothing, Lizzo has won approval from the Trademark Trial and Appeal Board (TTAB) for her applications to proceed to publication. While the journey for these applications is not yet complete (query whether anyone will oppose the applications), the obstacles Lizzo faced in the Trademark Office are very familiar to U.S. practitioners, and usually difficult to overcome. Thus, reviewing the TTAB’s decision to see how Lizzo was able to prevail where so many others have failed is instructive.
Lizzo filed two applications to register 100% THAT BITCH for use in connection with clothing in 2019, one based on use and the other based on intent-to-use. Both applications encountered the same refusal from the Examining Attorney: the dreaded failure to function refusal, which is often fatal to an application and, as practitioners know, is common in applications covering clothing. The Examiner took the position that the mark “is a commonplace expression widely used by a variety of sources to convey an ordinary, familiar, well-recognized sentiment,” and Lizzo responded by explaining that the mark was inspired by a lyric from her song “Truth Hurts”; as such, Lizzo argued that the mark is associated with her. Unpersuaded, the Examiner made the refusals final and refused requests for reconsideration. An appeal to the TTAB followed.
On appeal, the TTAB reviewed the parties’ arguments. The Examiner’s position was that, based on the record, “consumers will not view applicant’s mark as a trademark indicating the source of the clothing only sold by applicant, but instead as a message of self-confidence and female empowerment used by many different entities in a variety of settings.” To support this argument, the Examiner pointed out that Lizzo uses the mark ornamentally on clothing, and submitted screen shots from third-party commercial websites to show this. The Examiner further relied on the fact that Lizzo did not originate the phrase 100% THAT BITCH but just popularized it, explaining that Lizzo incorporated the phrase into her song “Truth Hurts” after seeing a meme containing the phrase; according to the Examiner, the fact that consumers might associate the phrase with Lizzo because it was a lyric in her song did not entitle Lizzo to appropriate exclusive use of the phrase on clothing. The Examiner submitted excerpts from the Urban Dictionary to explain the message of the phrase.
Lizzo, on the other hand, argued that the evidence showed that consumers associate 100% THAT BITCH with her. In doing so, she first pointed to other applications she filed for 100% THAT BITCH for various entertainment services and musical sound recordings which were not refused registration. Additionally, she argued that it is common for musical artists to adopt trademarks inspired by the titles or lyrics of their songs and submitted evidence of trademark registrations for CALL ME MAYBE (Carly Rae Jepsen), THE OLD TAYLOR CAN’T COME TO THE PHONE RIGHT NOW (Taylor Swift) and others. Other evidence included copies of take-down requests sent by Lizzo’s counsel to Etsy and other online retailers regarding infringing third-party use of 100% THAT BITCH.
Although the TTAB pointed out that a phrase adopted with the intention that it serve as a trademark does not necessarily function as a trademark, it ultimately concluded that 100% THAT BITCH serves as a source identifier. After reviewing the evidence, the Board found that while others in the marketplace use 100% THAT BITCH, they frequently do so in reference to Lizzo, her music and lyrics. As a result, the Board did not believe that 100% THAT BITCH is used in general parlance or to convey a common informational message, in contrast to other cases involving phrases such as ONCE A MARINE, ALWAYS A MARINE and THINK GREEN. Rather, the Board explained that while Lizzo did not originate the phrase, it is associated with her as a result of the success of “Truth Hurts,” and that much of the evidence of third-party use was from after the release of that song. Indeed, even responses to take-down letters acknowledged that the phrase is associated with Lizzo. Nevertheless, the Board went out of its way to emphasize that it did not find persuasive the evidence of registrations for other expressions associated with other musical artists. As is familiar to frequent readers of TTAB opinions, the Board again stated that prior decisions by Examiners have little evidentiary value and do not bind the TTAB.
The message from the TTAB seems to be that to overcome a failure-to-function refusal an applicant should be prepared to demonstrate that the phrase is associated with the applicant (perhaps by showing no or minimal use prior to the applicant’s adoption of the phrase) and that applicant has enforced of its rights so that use does not become widespread. If the phrase is in wide use at the time the application is filed, then registration may be an uphill battle.