In a precedential decision, the Trademark Trial and Appeal Board (the “Board”) reversed two refusals to register Grammy-winning singer Lizzo’s 100% THAT BITCH trademarks.
Lizzo’s company, Lizzo LLC, applied for two word trademarks in June 2019 for 100% THAT BITCH for various types of clothing after she popularized the phrase in her 2017 hit single “Truth Hurts.”. The song includes the lyrics “I just took a DNA test, turns out I’m 100% that bitch.” Lizzo adopted the line from a 2017 Twitter meme and gave the meme author credit as a song writer.
The Examining Attorney (the “Examiner”) originally refused registration for both applications on the grounds that the alleged marks failed to function as a mark. The Examiner noted that 100% THAT BITCH “is a commonplace expression widely used by a variety of sources to convey an ordinary, familiar, well-recognized sentiment.” In her response, Lizzo argued that she had adopted and used the 100% THAT BITCH mark in connection with her musical-artist related goods and services, including clothing, and that the marks are definitely associated with her. The Examiner was not convinced, made the refusals final, and denied Lizzo’s requests for reconsideration.
On appeal, the Board pointed out that matter can be registered on the Principal Register only if it functions as a mark and that not every designation adopted with the intention that it perform a trademark function necessarily accomplishes that purpose.
In analyzing whether 100% THAT BITCH functions as a source identifier for Lizzo when used in connection with clothing, the Board focused on consumer perception, and noted that the Board and courts have long held that slogans, phrases, or terms that consumers perceive as merely informational in nature are not registerable. Where the evidence suggests that the ordinary consumer would take the words at their ordinary meaning rather than read into them some special meaning that distinguishes the goods and services from similar goods and services of others, the words fail to function as a trademark. The evidence submitted by Lizzo and the Examiner included, among other things:
- An urban dictionary definition for 100% That Bitch (a woman whom everyone wants to be. Everyone is extremely jealous of her);
- The “Truth Hurts” song lyrics;
- Articles about Lizzo taking the phrase from a Tweet;
- Screenshots of clothing offered by Lizzo featuring 100% THAT BITCH; and
- Screenshots of third-party websites offering clothing and other merchandise emblazoned with 100% THAT BITCH, many of which mentioned Lizzo and “Truth Hurts” in their product descriptions.
Lizzo also pointed to a number of other song lyrics that were allowed registrations for clothing and other goods (i.e., LOOK WHAT YOU MADE ME DO, …READY FOR IT?, THE OLD TAYLOR CAN’T COME TO THE PHONE RIGHT NOW, and CALL ME MAYBE) and examples of alleged infringers complying with her take-down requests. See below for examples of third-party use and Lizzo’s use of 100% THAT BITCH:
Source: Op. p. 16.
Source: Op. p. 24.
Source: Op. p. 26.
Source: Op. p. 28.
From the evidence, the Board found it highly informative the fact that third parties use 100% THAT BITCH in the marketplace frequently in reference to Lizzo, her music, and lyrics and that lyrics from songs are more likely to be attributed to the artists who sing or rap them. The Board found that Lizzo popularized and elevated 100% THAT BITCH from what may have been a lesser-known phrase to a more memorable status.
Ultimately, the Board held that the evidence at hand showed that consumers do not recognize 100% THAT BITCH as merely a song lyric, but rather, consumers encountering the mark on the specific types of clothing listed in the applications—even when offered by a third party—associate the term with Lizzo and her music. The Board acknowledged that to some degree consumers have been exposed to use of 100% THAT BITCH in a non-source identifying way on clothing and similar goods but found that this was outweighed by references in most of those uses to Lizzo and her music.