Precedential No. 7: TTAB Reverses Failure-to-Function Refusal of Lizzo's "100% THAT BITCH" for Clothing Items

Attempts to register common slogans, internet memes, and informational material regularly hit the failure-to-function wall at the USPTO. But the Office has the burden of proof, and here its evidence fell short with regard to two refusals of the mark 100% THAT BITCH for certain clothing items, including t-shirts and baseball hats. The Board concluded that the evidence failed to show that the proposed mark is a common expression in such widespread use that it fails to function as a mark for the identified goods. In re Lizzo LLC, 23 USPQ2d 139 (TTAB 2023) [precedential] (Opinion by Judge Peter W. Cataldo).

Applicant Lizzo LLC is the trademark holding company of the popular singer and performer known as Lizzo. The proposed mark was inspired by a lyric in Lizzo’s song, “Truth Hurts.” The examining attorney maintained that 100% THAT BITCH "is a commonplace expression widely used by a variety of sources to convey an ordinary, familiar, well-recognized sentiment."

In analyzing whether a proposed mark functions as a source identifier, the critical issue is consumer perception. The Board and its reviewing courts have held that slogans, phrases or terms that consumers perceive as “merely informational in nature . . . are not registrable.” A widely used message will be understood as conveying an ordinary concept or sentiment, rather than serving as a source indicator.

“Where 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 and services from similar goods and services of others, then the words fail to function as a mark.” In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *3 (TTAB 2019) (internal punctuation omitted) ["100% REAL CALLINECTES CRAB FROM NORTH AMERICA & Design"].

The examining attorney relied on an Urban Dictionary definition of 100% That Bitch ("Slang. A woman whom EVERYONE wants to be. Everyone is extremely jealous of her."); lyrics from Lizzo's song, which includes the line "I just took a DNA test, turns out I’m 100% that bitch;" internet articles in which Lizzo admitted that she did not coin the term, but rather adopted it from an internet meme; and screenshots from websites offering various shirts and hats featuring the wording 100% THAT BITCH. Some of the evidence was from applicant's own website, and some evidence made reference to Lizzo's song.

Applicant argued that 100% THAT BITCH "functions precisely the way a trademark is supposed to function, namely, it identifies Lizzo as the source of goods," and that others use the term to trade off of Lizzo’s fame, notoriety, and goodwill in order to sell unauthorized merchandise, often making express reference to Lizzo and her song. 

The Board acknowledged that "[p]rominent ornamental use of a proposed mark, as shown in the examples of record, is probative in determining whether a term or phrase would be perceived in the marketplace as a trademark or as a widely used message.” However, that was not the end of the story.

Significantly, much of this evidence references Lizzo, her music and song lyrics from the single “Truth Hurts.” The remainder of the evidence displays 100% THAT BITCH used in context in internet articles discussing Lizzo, her song “Truth Hurts,” and the origin of the song lyric comprising the mark at issue. This lessens the weight we otherwise may have accorded the ornamental nature of those uses in showing that the phrase fails to function as a trademark.

Applicant and the examining attorney agreed that 100% THAT BITCH conveys a feeling of female strength, empowerment and independence. "But more importantly, considering 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."

Although Lizzo did not originate the phrase, and in fact gave a writing credit to the person who did create it, "lyrics from songs are more likely to be attributed to the artists who sing, rap or otherwise utter them, rather than the songwriters, who may be different individuals receiving varying degrees of writing credit." The evidence showed use of the phrase beginning in 2017, the year of her song. Thus the USPTO did not establish that the mark was "'widely used, over a long period of time and by a large number of merchandisers' before Lizzo popularized it." See D.C. One Wholesaler, Inc., 120 USPQ2d at 1716.

We acknowledge that to some degree consumers and potential consumers have been exposed to use of the proposed mark 100% THAT BITCH in a non-source-identifying (i.e., ornamental) manner on the same and similar goods to those of Applicant. We find, however, that that circumstance is outweighed by references in most of those uses to Lizzo and/or her music.

And so, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Last night, Lizzo won a Grammy for Song of the Year for the song "About Damn Time." Will that phrase be registrable?

Text Copyright John L. Welch 2023.