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Took a DNA Test, Turns Out “100% THAT BITCH” Is 100% Registrable

Addressing a refusal to register for failure to function as a trademark, the Trademark Trial & Appeal Board (Board) reversed, finding that the evidence of consumer perception of “100% THAT BITCH” did not demonstrate that the proposed mark is such a widespread and common expression that it failed to function as a source identifier. In re Lizzo LLC, Serial Nos. 88466264, 88466281 (TTAB Feb. 2, 2023) (Cataldo, Pologeorgis, Coggins, ATJ).

World-renowned, Grammy-winning artist Lizzo, through her company, Lizzo LLC, filed two applications to register 100% THAT BITCH for use in connection with clothing and related goods in International Class 25. The mark is a reference to a lyric (“I just took a DNA test, turns out I’m 100% that bitch”) from her chart-topping hit, “Truth Hurts.” The US Patent & Trademark Office (PTO) issued an office action refusing to register the mark based on failure to function as a trademark under Sections 1, 2 and 45 of the Trademark Act. Specifically, the examining attorney asserted that the phrase is a “commonplace expression widely used by a variety of sources to convey an ordinary, familiar, well-recognized sentiment.” The PTO denied the request for reconsideration, and Lizzo appealed.

In assessing a refusal to register for failure to function as a trademark, the Board must look to consumer perception of the mark; specifically, whether the mark serves merely an ornamental or informational purpose rather than a source-identifying one. In this case, the relevant consumer consists of the general public, as there were no limitations on the channels of trade or classes of consumers identified in the applications. The examining attorney argued that the evidence demonstrated only that the mark, as used on the relevant goods, portrayed “a message of self-confidence and female empowerment used by many different entities in a variety of settings”—a message that Lizzo “did not originate[,] . . . but merely popularized.”

The Board discounted much of the evidence proffered to show that the mark was ornamental as it largely all referred to Lizzo, her music and/or her song, “Truth Hurts,” demonstrating that “consumers encountering 100% THAT BITCH on the specific types of clothing identified in the application—even when offered by third parties—associate the term with Lizzo and her music.” The Board further noted that all of the evidence regarding third-party use corresponded with the release of Lizzo’s “Truth Hurts”—a correlation that suggests the term was not widely known or used until Lizzo popularized it.

Although there was no disagreement that the proposed mark conveys a “feeling of female strength, empowerment and independence,” the Board found that the record supported that “most consumers would perceive 100% THAT BITCH used on goods in the application as associated with Lizzo rather than as a commonplace expression.” Accordingly, the Board reversed the refusal to register.




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Press # For Options, but Not for a Trademark Registration

In a precedential opinion addressing the most fundamental requirement for trademark protection, the Trademark Trial & Appeal Board (Board) affirmed the US Patent & Trademark Office’s (PTO) refusal to register a “#” based mark on the ground that it fails to function as a mark. In re Pound Law, LLC, Ser. No. 87724338 (TTAB Nov. 9, 2022) (Adlin, Lynch, Larkin, ATJ)

Pound Law, claiming acquired distinctiveness under Section 2(f) of the Lanham Act, sought to register #LAW as a mark for providing legal services and legal referral services to consumers seeking a lawyer where legal representation or referral is initiated by phone. During prosecution, the Examining Attorney refused registration on the ground that #LAW failed to function as a service mark, reasoning that a consumer would only understand that dialing #LAW would put them in contact with some legal service provider, but not specifically Pound Law. Pound Law appealed.

Pound Law argued that the Examining Attorney improperly applied a per se rule against mnemonic or vanity telephone number marks as being incapable of functioning as a mark identifying the source of goods or services. In response, the Examining Attorney asserted that the PTO refused registration only after engaging in a specimen-based determination tailored to the #LAW mark. The Examining Attorney argued that, based on the manner of using the mark with a telephone, a consumer would regard #LAW only as a means of contacting Pound Law and concluded that #LAW does not indicate the source of legal services to be rendered, only a means by which legal services might be obtained.

To assess whether #LAW conveys an informational message or functions as a source identifier, the Board considered whether the nature of #LAW affects consumer perception of the asserted mark. The Board cited examples #LAW or #law being used throughout the legal industry, including as a hashtag in social media content. The Board reasoned that, in the context of social media, a hashtag functions as a searchable keyword, not as a source identifier. Pound Law argued that it ran radio advertisements vocalizing #LAW as “pound law” to explain to consumers that the asserted mark is not a hashtag.

The Board did not find Pound Law’s evidence persuasive, explaining that Pound Law’s radio advertising was insufficient to instill Pound Law as the source of the legal services in a consumer’s mind since “there is no correct pronunciation of a trademark, and consumers may pronounce a mark differently than intended by the brand owner.” The Board also pointed to evidence of Pound Law’s “extensive visual-only advertising,” which does not distinguish the use of an octothorpe as specifically a pound sign on a telephone keypad as opposed to a hashtag used on social media platforms. The Board concluded that many consumers would understand and pronounce #LAW as a hashtag (i.e., vocalized as “hashtag law”) “given the prevalence of social media and hashtags.” On this point, the Board highlighted “quite persuasive” evidence of numerous examples from the record showing third parties—e.g., law firms, legal [...]

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