American musician and rapper Lizzo recently scored a victory in the Trademark Trial and Appeal Board (the “Board”), reversing the Trademark Office’s refusal to register the “100% THAT BITCH” mark for “clothing, namely, t-shirts” because of an alleged failure to function as a trademark. The Board’s precedential decision will provide useful guidance for trademark applicants who face similar “failure to function” refusals, which seem to be increasingly common, particularly for unusual marks.
Section 1202.04 of the T.M.E.P. requires Examining Attorneys to refuse registration of any slogan, phrase, expression, or other proposed mark that does not function to identify the source of the applicant’s goods or services. Such refusals are most common for when the marks are used on clothing or hats (on the grounds that such use is mere ornamentation), the mark is a product design, the mark is also a trade name, or the mark is a commonly used expression.
Lizzo’s “100% THAT BITCH” mark was refused because the Examining Attorney claimed that the phrase is perceived by the public as “conveying the ordinary meaning of the message, or enthusiasm for, affinity with, or endorsement of the message.” Applicants who seek to register common phrases, including “I ♥ DC” or “INVESTING IN AMERICAN JOBS,” regularly receive the same type of refusal, but in this case, Lizzo appealed the refusal and won. The Board found that “[t]he evidence here does not demonstrate that Applicant’s proposed mark is used in general parlance or that it conveys a common social, political, patriotic, religious or other informational message such as DRIVE SAFELY, THINK GREEN or WATCH THAT CHILD.”
The standard used to determine whether a mark functions as a source identifier is how the designation would be perceived by the relevant public, and the burden is on the Examining Attorney to prove that a proposed mark will not function as a mark. In Lizzo’s case, the Examining Attorney failed to meet his burden when he offered only evidence that related to the origin of the expression (it originated from a viral internet meme) and that showed third-party online retailers selling merchandise with the expression on it. The Board found that while Lizzo did not originate the expression, she did popularize it through her 2017 hit song “Truth Hurts,” and because Lizzo had elevated the phrase to a “more memorable status,” the Board determined that members of the public were likely to attribute the expression to and identify it with Lizzo. It also found that the Examining Attorney’s evidence of third-party use post-dated the release of Lizzo’s song, and that the evidence showed that the third parties in fact included references to Lizzo and her music when advertising their “100% THAT BITCH” products. Thus, the evidence the Examining Attorney cited to show third-party use actually supported Lizzo’s registration.
As a result of the skillful dissection of the Examining Attorney’s evidence, Lizzo joins Taylor Swift and Carly Rae Jepsen in protecting song lyrics that became synonymous with them: “LOOK WHAT YOU MADE ME DO” for Taylor Swift and “CALL ME MAYBE” for Carly Rae Jepsen. But one need not be famous to overcome a refusal to function refusal. Instead, applicants should carefully examine the Examining Attorney’s evidence to determine if it supports the refusal—it often does not—and submit evidence that the relevant public associates the applied-for mark with the applicant, even if the applicant did not originate the mark or it is used by third parties. A “failure to function” refusal should not be the end of the line for resourceful applicants.
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