Last week, the Trademark Trial and Appeal Board ("the
Board") issued a precedential ruling in In re Lizzo LLC. The decision offers
an in-depth failure to function analysis, providing a roadmap for
future rights-holders and objectors.
Melissa Viviane Jefferson, known to the world as Lizzo—singer, rapper, flutist, and "100% THAT BITCH"—sought registration of the phrase that has been singularly identified with her, and already found registrable for goods and services in Classes 9 and 41.
However, when Lizzo LLC sought registration of the mark for apparel, the examining attorney at the Trademark Office ("Trademark Office") rejected Applications Nos. 88466281 and 88466264 on failure to function grounds—characterizing the phrase as "a commonplace message or expression and well-recognized motivational sentiment of self-confidence and female empowerment...[which] is widely used by a variety of sources to merely convey a familiar and well-recognized motivational sentiment of self-confidence and female empowerment." Indeed, slogans that are no more than informational, political, and religious statements; general affirmations; and common expressions are routinely struck down on grounds that they are not source indicating, and do not function as trademarks. See Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, and 1127. See also TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1202.04 (July 2022).
The Trademark Office's evidence to support the refusals included examples from online retail platforms that sold apparel with the slogan, and a Letter of Protest attaching comparable uses from various retail platforms. These examples included both Lizzo-authorized and unauthorized apparel that generally associated the slogan with Lizzo and her song Truth Hurts. In subsequent Office Actions, the Trademark Office requested information on the copyright in the lyrics to Truth Hurts, and licensing information on use of the slogan. The Trademark Office further characterized the phrase as unregistrable on failure to function grounds, reasoning that the genesis of the mark was a meme "I took a DNA test, it turns out 'I'm 100% that bitch,'" which Lizzo admitted she did not create. The Trademark Office issued its final refusal, which was appealed.
The Board was unmoved by the Trademark Office's evidence that the slogan did not function as a trademark, as well as the Trademark Office's reasoning for its refusals. Analyzing the record, the Board held:
- The size and positioning of the use was ornamental, which does not favor trademark use, but here much of the use also referenced Lizzo.
- There was no evidence of widespread common use of the phrase by others that preceded Lizzo's use, which does not favor refusal.
- There was no evidence that the phrase is a familiar everyday expression or laudatory term.
- There was no evidence that the phrase was a preference message, political, patriotic or religious statement, or informational message.
- The fact that other musicians may have registered a lyric phrase as a trademark has no real bearing on a failure to function analysis here, since prior decisions have no weight.
Importantly, the Board disregarded the Trademark Office's
argument that the genesis of the phrase was a meme that was not
created by Lizzo—holding that trademark rights are not gained
by creating the mark but by using it. Deflating
the Trademark Office's argument of widespread prior adoption of
the slogan, the Board found the Trademark Office's examples of
third-party use to support the Applicant's argument
that the slogan was indeed source-identifying, since the
references generally referred to Lizzo.
As a final observation: after the Supreme Court's 2019 decision in Iancu v. Brunetti, and 2017 decision in Matal v. Tam, the combination of which struck down on First Amendment grounds sections of Trademark Act Section 2(a) refusing marks characterized as "immoral and scandalous" or "disparaging," observers wondered if the Trademark Office would find reason to reject the same marks on failure to function grounds, that a possible swear word or offensive slogan simply could not be source indicating. Was the Trademark Office's original refusal here a possible attempt to offer rejected "viewpoint analysis" post-Brunetti?
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