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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