For music superstar Lizzo, 2023 began with a bang. Not only did Lizzo win Record of the Year at the 2023 Grammy Awards for her smash hit About Damn Time but her trademark holding company won a rare reversal from the TTAB, overcoming a "failure to function" refusal for her pending applications to register the phrase 100% THAT BITCH.
Lizzo LLC filed two applications seeking to register the phrase 100% THAT BITCH for apparel in Class 25, a mark inspired by a lyric in one of Lizzo's most well-known songs, Truth Hurts. In refusing registration, the Examining Attorney argued that the phrase 100% THAT BITCH was "a commonplace term, message or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment," and thus failed to function as a trademark, under Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127.
As with most "failure to function" refusals, this case turned on the evidence of record regarding third-party use of the expression 100% THAT BITCH. In support of refusal, the Examining Attorney relied upon website evidence submitted to the USPTO in a Letter of Protest, screenshots from additional websites selling apparel and other merchandise making primarily ornamental use of the phrase 100% THAT BITCH, and an urbandictionary.com entry. The Examining Attorney also argued that "Lizzo did not originate the phrase 100% THAT BITCH but merely popularized it," pointing to Lizzo's acknowledgment that the phrase was a derivation of the popular phrase "that bitch" and Lizzo's decision to give writing credit to the party who authored the Tweet that inspired the meme that inspired Lizzo to include the line "100% THAT BITCH" in her hit song.
Countering the Examining Attorney, Lizzo pointed to the USPTO's registration of other musicians' lyrics-inspired trademarks; her company's enforcement efforts against third-party sellers of merchandise featuring her mark; and statements on the third-party websites that the Examining Attorney put into evidence discussing Lizzo and her song, to demonstrate that consumers associate 100% THAT BITCH with Lizzo and is not simply as a common expression.
The TTAB agreed with Lizzo, concluding that the Examining Attorney's evidence did not demonstrate that the phrase 100% THAT BITCH was "used in general parlance or that it conveys a common social, political, patriotic, religious, or other informational message . . . ." Central to the TTAB's decision was its finding that there was no evidence of widespread use of the phrase over a long period of time by many users before Lizzo popularized it. That finding, coupled with Lizzo's successful enforcement efforts and third-party use that specifically sought to associate goods bearing the phrase with Lizzo and her music, ultimately persuaded the TTAB to find that 100% THAT BITCH is not, in fact, a commonplace expression but instead is entitled to registration on the Principal Register.
The case is In re Lizzo LLC, 23 USPQ2d 139 (TTAB 2023) (precedential).
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