How Lizzo showed that she is 100% That B****

Brassy singer Lizzo has lived up to her slogan as ‘100% THAT BITCH’ and proven that—when it comes to promoting and safeguarding her brand—persistence pays off.

The Grammy-award-winning artist first sang the line, “I just took a DNA test, turns out I’m 100% that bitch,” in her 2017 single Truth Hurts. While the line was inspired by an internet meme, it has since become a part of her brand (and she shares the credits with the originator of the phrase, Mina Lioness).

When Lizzo applied to the US Patent and Trademark Office ( USPTO) in 2019 to register ‘100% THAT BITCH’ for use on clothing and other apparel, it was refused on the basis that it failed to function as a trademark.

But, more than three years and several appeals for reconsideration later, Lizzo triumphed in what could be an influential case. Concluding in a precedential opinion published on February 2, the Trademark Trial and Appeal Board ( TTAB) reversed the USPTO’s judgment.

So how did Lizzo do it?

Identifying the source

Since the US can no longer reject trademark applications that may be deemed offensive or scandalous (as the word ‘bitch’, for example, might imply), the basis of refusals have lately been based on the fact that they decorate apparel, rather than designate their source.

In Lizzo’s case, the examining attorney refused registration under Sections 1, 2, and 45 of the Trademark Act, for failure to function as a mark on the basis that 100% THAT BITCH “is a commonplace expression widely used by a variety of sources to convey an ordinary, familiar, well-recognised sentiment.”

But, more than three years later, Lizzo proved the USPTO wrong—and it all turned on evidence.

She was able to show that the slogan is in fact associated with her by the public, and that she had “elevated the phrase to a more memorable status”, according to the TTAB. This proved that the trademark serves as a source identifier.

Felicia Boyd, head of IP brands at Norton Rose Fulbright in Minneapolis, told WIPR that she has worked with many clients who have had trouble registering slogans that might be seen as common because the point of a trademark was a test to identify a single source.

“The examiner's position was that it wasn't functioning as a trademark, because it didn't identify Lizzo. But Lizzo was able to come forward with a tremendous amount of evidence that showed that that phrase is actually associated with her.”

According to lawyers at Morrison Foerster, the examining attorney failed to meet that burden.

In their blog, Jennifer Lee Taylor (senior counsel), Joyce Liou (partner) and Justin Kareem Rezkalla (associate) explain that the standard used to determine whether a mark functions as a source identifier is how the designation would be perceived by the relevant public, and the burden falls on the examining attorney to prove that a proposed mark will not function as a mark.

“In Lizzo’s case, the examining attorney failed to meet his burden when he offered only evidence that related to the origin of the expression (it originated from a viral internet meme) and that showed third-party online retailers selling merchandise with the same expression on it,” they write.

A close-won case

Dana Dickson, founder of Dana Dickson Law, argues that Lizzo’s case was “close”.

She writes on LinkedIn that what “saved” Lizzo was partly those third-party retailers.

“A lot of the people selling the products with 100% THAT BITCH on them referenced Lizzo/Truth Hurts in the product listings. All of the evidence of third-party use was either ‘contemporaneous with or subsequent to the release of’ the song Truth Hurts.”

She adds: “Lizzo tried to stop the unauthorised use by having her lawyers send takedown letters to the sites selling 100% THAT BITCH products that didn’t come from her. The retailers responded in a way that showed they ‘recognize[d] that 100% THAT BITCH is associated with Lizzo and her music.’

Liz Lenjo, founder and managing consultant of MYIP Legal Studio in Kenya, and specialist in fashion and entertainment IP, argues that the US “overcomplicates” registrability.

“Lizzo deserves the trademark,” she tells WIPR. “In my view, the US has over-complicated the question of the registrability of a trademark to a large extent [by] the fact that one has to delve into source identification and ornamentation.

“However, in the same quest, US trademark practice has also led to curbing generic registrations, leading to stronger marks.”

Standards test

The case focuses on what constitutes ornamental trademark use and who can claim ownership over commonly used phrases and whether a mark functions as a source identifier. So how may these standards be met or challenged in similar cases?

Lenjo says that in order to prove that a mark is a source identifier, the question of a commercial impression will come up to oppose or fight an ornamentation claim by the Trademark Office.

Since the US is a first-to-use jurisdiction, Lenjo says that Lizzo’s case illustrates that the “It is evident that commercial impression is a huge consideration, leaving an applicant to explore usage first before registration,” she says.

“As such, an applicant would have no choice but to adduce evidence that addresses advertising and marketing information; consumer behaviour information; search-engine-optimisation data; and/or marketing campaign and sales information.

“Therefore active use and proof of use are really important. This goes to show that the digital footprint of a brand today goes a long way and that popularity counts for something.”

Failure to function

Boyd adds that trademarking slogans is becoming more common among famous people, but that the rejections of such registrations will also rise.

“A lot of celebrities are [now] looking to get trademark protection for their slogan, image, or a phrase that's tied to them, and translate it to goods such as alcohol, T-shirts or clothing.”

Mariah Carey, for example, successfully registered ‘Black Irish’ for her liqueur, since she associates with being both Black and Irish.

“[Lizzo’s] case really demonstrates that the trademark office is going to focus on the failure-to-function test whenever it's looking at slogans,” adds Boyd, “particularly slogans that might include an offensive word, because they can't reject it for being offensive. That's off the table—they can't do that.

“So now they need to focus on: is it failing to function as a trademark? It's the most rudimentary part of the Trademark Act that you cannot register something unless it actually functions as a trademark.”

MoFo lawyers Taylor, Liou and Rezkalla say that Lizzo’s case will provide useful guidance for trademark applicants who face similar failure-to-function refusals, which they also say are now increasingly common for unusual marks.

They point out that Lizzo joins Taylor Swift (“Look what you made me do”) and Carly Rae Jepsen (“Call me maybe”) in protecting song lyrics that became synonymous with the singer, and can effectively serve as a source identifier.

However, they argue that one need not be famous to overcome a failure-to-function refusal in response to a trademark application.

“Instead, applicants should carefully examine the examining attorney’s evidence to determine if it supports the refusal—as it often does not—and submit evidence that the relevant public associates the applied-for mark with the applicant, even if the applicant did not originate the mark or if it is used by third parties,” they write.

“A failure-to-function refusal is not the end of the line for resourceful trademark applicants.”

In any case, famous or not, Boyd adds: “We're absolutely going to see more of those objections or refusals to register over the next year.”

Dickson agrees: “Look out for more failure-to-function refusals—they are on the rise."

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