Lizzo Fights USPTO and Gets Trademark Win

Lizzo Gets Trademark Win at TTAB Over 100% THAT BITCH

Lizzo successfully overcomes refusal in the TTAB for 100% THAT BITCH for use in connection with clothing.

Initially refused registration by the examiner on the basis the mark failed to function as a trademark, Lizzo appealed the decision and successfully overturned the examiner’s refusal on February 2, 2023.

Background of the Case

In 2019, Lizzo, LLC filed two applications for registration on the Principal Register of 100% THAT BITCH (in standard characters), as a mark identifying the following goods in International Class 25: “Clothing, namely, shirts, jackets, jerseys, beanies, baseball hats, headwear, shorts, tank tops, sweatshirts, long sleeve shirts, hooded sweatshirts, hooded shirts, bandannas, wristbands as clothing, headbands, shoes and sleepwear” and “Clothing, namely, t-shirts.”

The Trademark Examining Attorney refused registration in each application of 100% THAT BITCH 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-recognized sentiment.”

In response to the initial refusal, Lizzo’s lawyers explained that the proposed mark was inspired by a lyric in one of Lizzo’s songs entitled “Truth Hurts” and she had adopted and used the proposed mark in connection with her musical-artist related goods and services, including clothing, and the proposed mark is definitively associated with her.

Failure to Function or Source Identifier?

The Board explained in its decision that in determining whether a proposed mark functions as a source identifier, the focus is on “consumer perception” and whether they view the mark as an identifier of source for the services or goods.  Common terms or phrases that consumers of the goods or services are accustomed to seeing in the market may be merely informational and fail to function as a trademark if they convey ordinary, familiar, or generally understood concepts or sentiments.

The court stated, “widespread use of a term or phrase may be enough to render it incapable of functioning as a trademark, regardless of the type of message” and “[w]here the evidence suggests that the ordinary consumer would take the words at their ordinary meaning rather than read into them some special meaning distinguishing the goods [in the applications] and services from similar goods and services of others, then the words fail to function as a mark.”

The lyric that inspired it all goes as follows: “I just took a DNA Test, turns out I’m 100% that bitch.”  The examiner presented evidence that (i) Lizzo, herself, stated that the lyrics originated after seeing an internet meme containing the phrase, which she later adopted and placed into her song “Truth Hurts”; (ii) Urban Dictionary definition of “100% that bitch” indicates it has a widely understood meaning beyond connection with Lizzo and (iii) numerous listings by third-party online retail listings for shirts showing the phrase “100% THAT BITCH” on the front of shirts, mugs, and other goods.

Counsel for Lizzo argued the third party uses online only served to support the claim that the phrase 100% THAT BITCH is associated with Lizzo, making note that the listings themselves mentioned Lizzo in some cases, and the use was not so widespread so as to cause the public not to identify Lizzo as the source of the goods. 

Ultimately the TTAB determined the evidence did not establish that 100% THAT BITCH was a common expression in such widespread use that it fails to function as a mark for clothing and reversed the refusal to register. 

It is not uncommon for song lyrics to make their way to the USPTO Registrar.  In fact, the following are some examples of registered marks derived from lyrics noted in the briefing:

  • Reg. No. 5770375 for LOOK WHAT YOU MADE ME DO for goods and services including clothing;

  • Reg. No. 5770429 for …READY FOR IT? for goods and services including clothing;

  • Reg. No. 5944651 for THE OLD TAYLOR CAN’T COME TO THE PHONE RIGHT NOW for protective covers for mobile phones; and

  • Reg. No. 5124573 for CALL ME MAYBE for clothing.

For more information about trademark protection, see our Trademarks and Industry Focused Legal Solutions pages.

Blog, Law, TrademarksMelissa Gray