Lizzo Trademark "100% That Bitch"
Music Trademarks: Consumers Predominately Associated The Phrase "100% That Bitch" With The Singer Lizzo And Her Music, Not Just As A Lyric In One Of Her Songs.
How To Create A Trademark From Song Lyrics
Popular singer-songwriter, Lizzo, famously sang the phrase “I just took a DNA test, turns out I’m 100% that bitch” in her hit song “Truth Hurts” released in 2017. Following the phrase’s popularity, Lizzo LLC (“Applicant”) sought to register the mark "100% That Bitch" for clothing goods and services, including shirts, jackets, t-shirts, and shoes, in International Class 25. Applicant filed two trademark applications for the mark, one based on intent to use in commerce (Serial No. 88466264) and one based on actual use in commerce (Serial No. 88466281).
A trademark is any word, name, symbol, etc., used by a person to identify and distinguish their goods from those of others and to indicate the source of the goods. A term or phrase that is widely used in the market is unlikely to function as a trademark because widespread use of a term or phrase can render it incapable of being perceived as a source identifier.
The United States Patent and Trademark Office (“USPTO”) evaluates the consumer perception of a proposed trademark and whether it functions as a source identifier. If the term is perceived by consumers as merely informational, it is not registrable as a trademark. This includes common terms and phrases that consumers are accustomed to seeing used by multiple sources. The USPTO evaluates the actual use of a proposed trademark in the marketplace to determine consumer perception. If the evidence suggests that consumers take the term at its ordinary meaning, it fails to function as a trademark.
Trademark Examiner Initially Refused Lizzo's Mark
After reviewing Lizzo's mark applications, the Trademark Examining Attorney refused registration for the proposed "100% That Bitch" mark, stating that it was a commonplace expression and thus, did not function as a trademark. Applicant argued that the mark was inspired by a lyric in one of Lizzo's songs and was associated with her musical-artist related goods and services. The Examining Attorney did not accept the arguments, but the appeals were resumed and consolidated. After an oral hearing, the Trademark Trial and Appeal Board (“Board”) reversed the refusals to register and granted Applicant the trademark.
The Board found that evidence in the record showed that the mark was used prominently in an ornamental manner on various goods, often in reference to the singer Lizzo and her song “Truth Hurts.” Further, the Board determined that the evidence did not demonstrate that the proposed mark was used in general parlance or conveyed a common informational message. While the Examining Attorney argued that the mark conveyed a message of female strength, empowerment, and independence used by many different entities in a variety of settings, the Board found that most consumers perceive the phrase “100% THAT BITCH” used on the goods in the application as associated with Lizzo rather than as a mere commonplace expression.
Trademark Board Found Phrase Popularized by Lizzo
In fact, the Board found that the evidence supported that the "100% That Bitch" phrase became popularized and elevated to a memorable status by the musical artist Lizzo and her hit song "Truth Hurts" as there was no evidence of the use of the term before 2017, and the third-party use of the term was contemporaneous or subsequent to the release of Lizzo’s song. Moreover, much of the evidence of third-party use associated the goods with Lizzo, her music, and the lyrics from "Truth Hurts." Third-party retailers also recognized the association of the term with Lizzo and her music.
The Board explained that the evidence undercut the Examining Attorney’s finding that the phrase was a commonplace expression because it showed that consumers predominately associated the phrase "100% That Bitch" with the singer Lizzo and her music, not just as a lyric in one of her songs. Finally, the Board noted that the registrability of other lyrics and slogans by other musical artists had little bearing on the question of whether "100% THAT BITCH" is registrable as a trademark for clothing. It stated that prior decisions and actions of trademark examining attorneys have little evidentiary value and the case must be decided based on its own facts.
Importantly, the Trademark Board determined that phrases that are song lyrics can serve as trademarks in some circumstances, but there is no per se legal rule for it.
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