04 August 2023 • 4 min read
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Just days before Lizzo won her fourth Grammy in front of a star-studded audience, giving her a standing ovation, she had another big victory off the stage. She won the right to register the phrase “100% That Bitch” as a federal trademark in the USA. But this was after a protracted legal tussle with the US Patent and Trademark Office (USPTO).
Her controversial trademark sets a new precedent for popular perception and free speech.
Now famous as Lizzo, the American singer, rapper, and flutist is officially named Melissa Jefferson. She’s won 4 Grammys to date. With a net worth of $40 million, Lizzo is considering expanding her empire by branching into apparel and merchandise.
But the USPTO put a temporary obstacle in her path. The trademark office rejected an application for a crucial trademark. Luckily, the Trademark Trial and Appeal Board (TTAB) saw things differently.
Let’s take a look at Lizzo’s controversial trademark and how it marks many firsts.
The phrase in question is the now-iconic opening line of her 2017 song “Truth Hurts.”
I just took a DNA test, turns out I’m 100% that bitch
This song won her a Grammy in 2020 after its re-release in 2019. Shortly after, in June 2019, the singer’s company Lizzo LLC applied for two-word marks for “100% That Bitch” for “various types of clothing.”
However, in July 2022, an examiner from the USPTO finalized a refusal to register the marks. This was on the grounds that it was too general to warrant any official trademark protection.
They claimed it was a “motivational phrase” and “a message of self-confidence and female empowerment used by many different entities in a variety of settings.”
This lengthened the already complicated process of securing a trademark. It also presented a significant setback to Lizzo’s plans to launch her own unique brand.
In February 2023, in a twist befitting a cultural icon, the song and its singer’s popularity swung the case in Lizzo’s favor.
Responding to the trademark office rejection, Lizzo’s representative legal advisors argued that:
“100% That Bitch" functions precisely the way a trademark is supposed to function.” In an application to the Trademark Trial and Appeal Board (TTAB), Lizzo’s law firm claims “it identifies Lizzo as the source of goods.”
They also claimed this was why many retailers were “attempting to trade off Lizzo’s fame, notoriety, and goodwill.” They also stated that retailers were selling unauthorized merchandise and clothing identified with Lizzo.
The TTAB found that the evidence of widespread use cited by the examiner was, in fact, proof of the fact that the general public associates the phrase with Lizzo and her music. According to the TTAB, even when the phrase was used ornamentally on clothing, it was associated with Lizzo.
In the legal updates, Lizzo’s lawyers also presented evidence of merchandise sold with other phrases from “Truth Hurts.” Many pieces of apparel bore the phrases “I just took a DNA test and...” as well as “100% that bitch" both together as well as in many variations.
This was to prove that the popular phrase is closely associated with Lizzo and her famous song “Truth Hurts.”
“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 TTAB concluded.
That’s what makes this a precedent-setting ruling. It forges a path for trademarking phrases popularized by celebrities. These celebrities have usually created a strong association with these in the minds of their audiences and consumers. Even if the proposed mark could otherwise be considered too “commonplace.”
This case is also a significant victory for free speech in trademark law. The Lanham Act (1946) is considered America’s primary trademark statute. It provided for the national trademark registration and protection system as we know it today. It initially allowed the government to reject trademark applications deemed “scandalous” or “immoral.”
In 2019 the Supreme Court decided that this violates free speech. But Lizzo’s case is the first high-profile, seriously-contested case to put this to the test.
Thus, the TTAB overturning the USPTO’s appeal in Lizzo’s favor, allowing her to register a controversial, unconventional phrase containing a curse word, as a federally registered trademark, is a massive win in many ways and a turning point in trademark law and litigation catching up to popular culture and new-age business practices.
As Lizzo would say, “About Damn Time.”
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Amrusha is a versatile professional with over 12 years of experience in journalism, broadcast news production, and media consulting. Her impressive career includes collaborating extensively with prominent global enterprises. She garnered recognition for her exceptional work in producing acclaimed shows for Bloomberg, a renowned business news network. Notably, these shows have been incorporated into the esteemed curriculum of Harvard Business School. Amrusha's expertise also encompassed a 4-year tenure as a consultant at Omidyar Network, a leading global impact investing firm. In addition, she played a pivotal role in the launch and content strategy management of the startup Live History India.
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