Branding a Viral Moment: The Complexities of Trademarks for Famous Phrases
By Taylor Osher for PRNews
In the age of social media, phrases can go viral overnight. Such viral moments have become a staple of online culture—shaping trends, influencing language, and even driving consumer behavior. Their viral nature can make phrases powerful cultural assets, leading individuals and businesses to try to protect them as trademarks and cement their reputation in culture. Registering a phrase as a trademark however can be challenging.
In recent years, the U.S. Patent and Trademark Office (USPTO) and its Trademark Trial and Appeal Board (TTAB) have grown increasingly conservative, frequently rejecting applications for phrase marks under the “failure to function” doctrine. This can arise when a phrase has become so widespread that it no longer serves as a source identifier of goods and services. Ironically, the viral nature of a phrase, the key to its popularity, can undermine its ability to function as a trademark.
The “Failure to Function” Doctrine
Under the “failure to function” doctrine, a mark fails to function as a trademark if it does not clearly identify the source of goods or services. The USPTO’s Trademark Manual of Examining Procedure outlines the factors that examiners must consider, including whether the phrase is merely a common expression or sentiment that is widely used by others in a non-trademark sense. When a phrase is used in a widespread or generic manner, it is difficult for consumers to associate it with a single source of goods and services, thereby weakening its potential as a trademark. The USPTO has rejected trademark applications for this reason, emphasizing that popular phrases used in memes are often seen as “commonplace” rather than as indicators of source. This presents a significant hurdle for those seeking to trademark viral content.
The Case of “100% THAT BITCH”
A high-profile example of this was the pending trademark application for “100% THAT BITCH” filed by the artist Lizzo for use on clothing. Initially, USPTO rejected the mark for failure to function as a trademark. The examiner asserted the phrase was commonly used as a motivational expression, making it unlikely for consumers to associate it with Lizzo’s goods. Moreover, examples of third-party usage showed the phrase had become widespread, further complicating Lizzo’s efforts to show such consumer association.
Lizzo responded that third parties were trading off the goodwill she had created through her hit song “Truth Hurts,” where the phrase “100% That Bitch” gained fame. However, the USPTO maintained its position stating:
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