In 2019, the rapper, singer, and flutist, Lizzo took the world by storm with her anthem “Truth Hurts.” While Lizzo originally released the song in 2017, the rerelease for radio in 2019 hit number one on the Billboard Hot 100, making her one of only three female rappers to achieve that. Truth Hurts stayed at number one for seven weeks, making it the longest-running number-one song by a female rapper.
But “Truth Hurts” is also iconic because of its memorable lyrics. In the opening lines of the song, she sings, “I just took a DNA test; turns out I’m 100% that bitch.” With those bold words, Lizzo inspired a whole generation of single women. But the U.S. Patent and Trademark Office tried to hold her back when she tried to capitalize on the phrase she popularized.
Failure to Function and Trademark
One of the primary functions of a trademark is to distinguish goods and services from those that are similar by indicating the source. For example, we can easily distinguish the Coke logo from the Pepsi logo on a can of soda. If we see a shirt with the Nike swoosh and “Just do it,” we know it is a Nike brand shirt. When a product or service doesn’t act as a “source indicator,” we say it “fails to function” as a trademark, and the U.S. Patent and Trademark Office (USPTO) will decline trademark registration.
When the USPTO receives something with a widely used phrase or message, it will often reject it for a failure to function as a trademark. For example, you can’t necessarily trademark the phrase “Made in the U.S.A.” It’s a common phrase not associated with a particular brand; it wouldn’t indicate the source.
In re Lizzo LLC
Melissa Viviane Jefferson, also known as Lizzo, recently challenged the USPTO on how it implements “failure to function” trademark rejections after the agency rejected her trademark applications on those grounds. Lizzo popularized the phrase “100% THAT BITCH” in her hit 2019 song “Truth Hurts.” Lizzo’s trademark holding company, Lizzo LLC, filed several trademark applications for the phrase for various goods and services, including two trademark applications related to a clothing line.
The UPTO denied Lizzo LLC’s applications on failure to function grounds, indicating that the phrase doesn’t indicate the source. When Lizzo LLC appealed to the Trademark Trial and Appeal Board (the Board), the USPTO argued that the phrase is a message of female empowerment not associated with a particular source, citing several examples of the phrase being used elsewhere on clothing, and Lizzo’s statement that she didn’t create the phrase. The USPTO stated that the phrase “is a commonplace expression widely used by a variety of sources to convey an ordinary, familiar, well-recognized sentiment.” Lizzo admitted that the phrase originated as a meme that said, “I just took a DNA test, turns out I’m 100% that bitch,” before she released “Truth Hurts.”
However, Board reversed USPTO’s refusal to register the mark, finding that consumers would associate the phrase “100% THAT BITCH” with Lizzo. The Board stated:
The evidence here does not demonstrate that Applicant’s proposed mark is used in general parlance or that it conveys a common social, political, patriotic, religious or other informational message such as DRIVE SAFELY, THINK GREEN or WATCH THAT CHILD. [C]onsidering the entirety of the record, we find that most consumers would perceive 100% THAT BITCH used on the goods in the application as associated with Lizzo rather than as a commonplace expression.
The Board explained that lyrics are much more likely to be associated with the artist who popularized them than songwriters who may share writing credit on albums. Lizzo elevated the phrase “100% that bitch” to memorable status. Additionally, many third-party retailers using the phrase on merchandise responded to take down notices from Lizzo LLC acknowledging the phrase is associated with Lizzo and her song “Truth Hurts.”
In concluding that the record as a whole doesn’t establish that “100% that bitch” is such a common phrase as to fail to function as a mark for goods, the Board went so far as to state that “there is no per se legal rule against phrases that are song lyrics serving as trademarks in some circumstances.” As Lizzo would say, “It’s about damn time.”
Call Earp Cohn, PC