A Mindful Look at Trademark Protection Amid Newfound Fame
“While a viral phrase may seem like a golden ticket to brand recognition and success, history has shown not every viral sensation will result in trademark protection.”
Jools Lebron
Imagine this – you’re a content creator tipping your toe into the turbulent waters known as TikTok. Amid a sea of compelling content, you labor over every video, ensuring each captured moment is as catchy and clever as the next. Until one day – it happens. One of those carefully crafted sound bites becomes a viral sensation. The phrase catapults you to stardom and is suddenly a staple in content everywhere. Your followers are multiplying, your brand is booming, and you’re riding high on a wave of newfound fame.
And then – you learn another individual has filed a trademark application for YOUR catchphrase. A stranger is attempting to capitalize on the slogan that YOU made famous. Suddenly, your excitement is overshadowed by frustration and despair. Anxious thoughts flood your mind. Did you drop the ball by waiting to protect your valuable intellectual property? Can this person stop you from using your very own creative concepts? What do you do when your social media dreams turn into a trademark nightmare?
Meet Jools Lebron. Lebron is the latest influencer to find herself in the midst of this very conundrum. She shot to fame in early August with her “Very Demure, Very Mindful” video, which has generated over 52 million views on TikTok to date. The satirical phrase has taken social media by storm, with everyone from celebrities to corporations jumping on the “demure” bandwagon.
On August 20, 2024, an unrelated individual named Jefferson Bates took the wheel of that bandwagon and filed a trademark application for VERY DEMURE .. VERY MINDFUL .. with the United States Patent and Trademark Office (USPTO). In a tearful video, Lebron lamented whether her efforts and investments would all be lost because someone else beat her to the filing punch. Is there anything Lebron can do about this apparent trademark troll? How can she salvage her brand and continue to thrive amidst a legal battle for her trademark rights?
Commercial Use
Trademark protection is importantly only available for catchphrases and other devices used commercially. For that reason, Lebron’s video post on its own has likely not created any presumptive trademark rights simply by going viral – much to the chagrin of her and the public.
Fortunately, all is not lost for Lebron. Lebron made several videos in partnership with popular brands like Verizon, Lyft, and Synergy Kombucha using her “very demure” catchphrase in the days that followed her viral success. In the United States, trademark rights can accrue through commercial use even absent a trademark filing – and “first to use” rights trump “first to file” rights. In some good news for Lebron, these brand deals likely qualify as commercial use of the catchphrase that can give Lebron priority over any subsequently filed trademark applications.
Registration Concerns for Viral Phrases
To date, five separate individuals have now filed trademark applications for related “demure” phrases inspired by the video, including Lebron herself. While Lebron may be able to ultimately establish priority over these copycat filers, she could still run into registration issues if the USPTO is not convinced the public associates the viral catchphrase with her and her brand alone.
For example, how many people can recall the origins of “SOCIAL DISTANCING,” a mark which flooded the USPTO with trademark applications in 2020 during the pandemic? Or the now famous meme “OK BOOMER?” What about the “GIRL DINNER” TikTok trend? Probably not many. Instead, these phrases are often considered common messages used by the public that do not identify any specific source of products or services. We all know that history is the best predictor of the future. So how has the USPTO treated these filings in the past?
USPTO Treatment
The vast majority of trademark applications comprised of viral catchphrases never achieve registration in large part due to the “failure to function” doctrine. If at the time of examination – rather than filing – the public is likely to view the applied-for phrase as a “widely used message” that does not point to the applicant directly, the USPTO can refuse registration on grounds the applied-for mark “fails to function” as a source identifier. This determination is often fatal to an application. Even applicants who can clearly show they originated a phrase like Lebron may be out of luck if the public doesn’t associate the slogan substantially exclusively with their brand.
Notably, the musical legend Lizzo herself recently had to fight to secure rights in the phrase “100% That Bitch” made famous by her song “Truth Hurts” after receiving a “failure to function” refusal from the USPTO. The USPTO initially claimed that the phrase was commonly used on merchandise and therefore would not be associated exclusively with Lizzo by the public. However, the USPTO ultimately agreed upon appeal that the public does associate this phrase with Lizzo and her music and granted her trademark protection, demonstrating that it is possible to overcome a dreaded failure to function refusal with strong evidence of brand recognition.
An Uphill Battle for Bandwagon Jumpers
In addition to the likely “failure to function” refusal, filers who did not originate the viral phrase could also receive a “false association” refusal from the USPTO if it is determined the public would mistakenly believe the brand is connected with the original creator. Furthermore, an applicant filing a trademark application with the USPTO must swear under penalty of perjury they are using or plan to use the mark in commerce and are not aware of any other individuals or entities who have rights in the mark – meaning there can also be oath and ownership issues for these filers.
One bandwagon filer facing these issues is Kassandra Pop, aka Raluca Pop, who claims she filed a “demure”-inspired trademark application to help Lebron and is in the process of transferring ownership of the application to her. As an initial matter, intent to use applications cannot be easily assigned to a new owner, despite Pop’s altruistic efforts. Furthermore, because Pop admittedly never had any intent to use the mark in commerce – and even believed Lebron to be the rightful owner of the phrase – her application is likely to be considered void and unenforceable.
So, What Can Lebron and Other Influencers Do to Protect Themselves?
Building a brand around a viral catchphrase is not easy. However, the following steps can put influencers and brand owners in the best position to capitalize on their creativity:
- Consult with a Trademark Attorney: Trademark law is nuanced. An experienced trademark lawyer can help you develop a brand strategy that creates a path to enforceable legal protection.
- Conduct a Search: There’s always a chance another party has already built-up rights in your now viral wording. Conducting a search to determine the trademark is available for use and registration is wise prior to investing significant money and time into your new brand.
- File Early: Don’t wait to file a trademark application. The sooner you alert the public that you intend to capitalize on your phrase, the better chance you have of establishing brand recognition for the long-haul.
- Think Ahead: If you plan to launch your brand in connection with a business, it is important to set up this business right away and file the application in the name of that entity to avoid any ownership issues once your business has launched.
- Use the Phrase Consistently: Ensuring that the public continues to associate the exact phrase sought with your brand is key to long-term success. Engage with audiences through social media, merchandise, collaborations, don’t change up how you use your mark, and continue to solidify the connection between you and the phrase among the public.
- Document Use: Keep detailed records of your use of the mark and evidence of all the goods and services used in association with your brand.
- Secure Domain Names and Social Media Handles: Registering domain names and securing social media handles that include the viral phrase can prevent others from using the mark online in ways that could dilute your brand and prevent misuse on platforms like Instagram, X, and TikTok.
- Monitor and Enforce: Keep an eye on how others are using your phrase and take timely action if another party tries to use your phrase commercially without your permission.
- Licensing Agreements: Once you’ve secured rights and established brand recognition in your phrase, consider contracting with and outsourcing rights in your trademark via a licensing agreement to create additional revenue streams while maintaining quality control over your brand.
Reaching a Mindful Conclusion
While a viral phrase may seem like a golden ticket to brand recognition and success, history has shown not every viral sensation will result in trademark protection. It may not be an easy road ahead, but – with careful planning and strategic use – Lebron will hopefully show influencers everywhere that it’s possible to take control of your brand and turn a fleeting moment of internet fame into a legally protected asset.
Katie Eissenstat
Katie Eissenstat is an associate in the Intellectual Property Practice Group in Haynes Boone’s Dallas office. Her practice focuses on trademarks and brand management. Prior to joining the firm, Katie […see more]
Jeffrey Becker
Jeffrey Becker is a Partner with Haynes Boone. Jeffrey is one of only 11 U.S. trademark attorneys who has been repeatedly, nationally recognized by World Trademark Review’s WTR 1000, Globe […see more]
