What do a social media content creator and reality television stars have in common? Apart from more followers than I’ll ever have, significant issues regarding their trademarks. Jools Lebron, a content creator, was distraught to learn that several individuals applied to register with the United States Patent and Trademark Office (the “USPTO”) a catchphrase she made famous. Ariana Madix and Katie Maloney, reality stars turned restaurateurs, were presumably surprised to learn that a former business partner applied to register the name of their restaurant. These are not uncommon scenarios. But what can we learn from them?
Lebron is a social media personality that shot to fame this summer. She posted a video about how she is “very demure, very mindful” regarding makeup choices for work. The video has since been viewed millions of times and has sparked a trend on social media as we transition from “brat summer” to “demure fall.”
Lebron invested in merchandise featuring the catchphrase to promote herself. But she did not immediately apply to register the phrase with the USPTO. Shortly after Lebron’s video went viral, several third parties filed applications with the USPTO for the catchphrase and variations of the same. The applied for marks include VERY DEMURE .. VERY MINDFUL .. for advertising services, VERY DEMURE VERY CUTESY for advertising services, and ALWAYS DEMURE AND VERY MINDFUL for clothing. This was perhaps an attempt to capitalize on Lebron’s fame.
Recently, Jools Lebron filed two applications for VERY DEMURE VERY MINDFUL for numerous goods and services, including cosmetics, clothing, bags, and advertisement and entertainment services. Because Lebron’s applications were filed after the above applications, the USPTO may cite the prior filings as the basis for a refusal regarding Lebron’s filings.
Pivoting to reality television, Something About Her LLC (“SAH”), is a California-based company owned by Madix and Maloney who have leveraged their public personas to promote their SOMETHING ABOUT HER restaurant and brand. Madix and Maloney partnered with celebrity chef Penny Davidi to help create the menu for their future sandwich shop.
SAH and Davidi had a falling out and parted ways. But not before Davidi’s company, Put a Fork in It LLC, filed an application to register the trademark SOMETHING ABOUT HER for restaurant services.
In July, SAH filed an application for SOMETHING ABOUT HER for several goods and services, including restaurant services, clothing, and fragrances. SAH is currently engaged in a proceeding at the Trademark Trial and Appeal Board and a California state court action concerning ownership of the SOMETHING ABOUT HER mark.
These cases are facially unrelated. But they underscore the importance of establishing and protecting trademark rights. In particular, they highlight several considerations for trademark applicants:
- Do Conduct Thorough Trademark Searches: Before filing a trademark application, it’s crucial to conduct comprehensive searches to ensure that the mark is not already applied for or in use for identical or related goods or services.
- Don’t Wait to File: Trademark applications can be filed on an intent to use basis and actual use can commence several years later. But owners can rely on the filing date as if the mark was first used on that date.
- Don’t Disclose Your Trademarks Before Filing: Madix and Maloney discussed the idea for their SOMETHING ABOUT HER restaurant on January 4, 2022 during an episode of their reality show, which had an initial viewing audience of 650,000. This could have prompted numerous attempts to capitalize on the brand, as was done to Lebron.
- Do Document Use and Promotion: Maintaining detailed records of the use and promotion of a trademark can be invaluable in establishing rights. Although Lebron does not own prior filings for VERY DEMURE VERY MINDFUL, she may be able to establish prior rights by relying on the steps taken to use the mark in commerce.
- Do Monitor Prior Filings: Intent to use based filings may block a subsequently filed application. But applicants must perfect their rights by actually using their trademarks in commerce. If the marks are not used, the applications should become abandoned.
These cases illustrate the complex issues surrounding establishing trademark rights and registering trademarks with the USPTO. More difficulties may arise when celebrities attempt to establish trademark rights in popular phrases. And this trend may be on the rise.
It’s uncertain what avenues Lebron and Madix and Maloney may take to ensure ownership of their valuable trademarks. But what is clear is that we can learn a lot from celebrities and their associated branding.
