The Battle Over Trademarking Viral Slogans
Everyone knows popular slogans like Nike’s “Just do it,” McDonald’s “I’m lovin’ it,” and Disneyland’s “The happiest place on Earth.”[1] These short and catchy slogans are trademarked by these businesses and organizations make their products and services stand out from their competitors. Id. Trademarking a slogan can secure a company’s exclusive rights to that slogan and enhance brand recognition. Id.
TikTok has quickly become one of the most popular social media platforms worldwide.[2] Along with TikTok’s growth, many slogans and phrases have gained popularity Jools LeBron, a TikTok influencer, popularized the phrase “Very Demure, Very Mindful” in her viral makeup videos.[3] This trend spread widely and users started creating videos using the “Very Demure, Very Mindful” sound. Id. The phrase became a popular audio and catchphrase that people regularly use. Id. Less than a month after Jools posted her video, Jefferson Bates filed an application to register the trademark “Very Demure, Very Mindful” for use in advertising and marketing services. Id.
Trademark law provides legal protection for distinctive names, phrases, symbols, and designs.[4] People and businesses trademark a slogan for several reasons: to establish themselves as the assumed rightful owner, to use the federal registration symbol (®) with their slogan, to include it in the federal trademark database, and to gain the ability to file lawsuits in federal court.[5] To trademark a slogan, the person or business needs to file an application with the USPTO, including information about the slogan, its intended use with specific goods or services, and proof of its usage in commerce.[6] Even if the person or business has not started using the slogan but intends to, they can still apply for the registration as long as it’s a real, good-faith intention.[7]
A slogan cannot be trademarked if it does not clearly identify the brand, meaning that when someone sees the slogan, they have to immediately think of your business.[8] If it is too generic, informational, or commonly used in its industry, then that slogan will also be unable to be trademarked.[9] Additionally, a slogan cannot be trademarked if it is too similar to another slogan unless it is in a completely different industry.[10]
Trademark rights come from using the mark for a business, not just from registering it.[11] The scope of protection for a trademark is limited to the specific goods or services identified in the registration.[12] The protection only applies to the exact categories and services associated with the trademark.[13] For example, if a business registered “Fordham Granolas” as a trademark for their brand of granola bars, this protection applies only to granola bars. Another business can register “Fordham Granolas” for something unrelated, like a hair salon. The “Fordham Granolas” trademark does not prevent its use in other industries that aren’t related to granola bars. Bates registered the phrase for advertising services, meaning Jools could still use it for other categories like apparel or makeup, provided there’s no risk of confusion.[14]
In a “first to file” system, the first to officially register the trademark would secure the rights.[15] On the other hand, a “first to use” system, followed by the United States, gives priority rights to the business that uses the trademark in commerce first.[16] In this system, trademark rights are given based on usage rather than filing.[17] Just because Bates submitted his trademark application first, it doesn’t prevent Jools from using the phrase as her trademark.[18] Jools could still have priority over Bates if she can prove that she used it in business before his application date.[19]
A trademark troll is someone who registers a trademark in bad faith to pressure the rightful owner of a similar mark into paying money.[20] They make money by filing infringement lawsuits, pushing for expensive buyouts or licensing deals, or charging settlement fees from the actual trademark owners.[21] A common scheme for trademark trolls includes registering a popular phrase and then demanding that people or businesses stop using it online.[22] Then, they threaten legal action or demand payments, such as royalties.[23] In these cases, the person being targeted can choose to ignore the troll or fight back against the claim.[24] Bates, a trademark troll, had a history of filing for trademarks associated with popular phrases.[25] Bates has repeatedly filed applications for phrases linked to popular sports teams, like the Broncos and the Commanders.[26]
It is this author’s opinion that as social media platforms like TikTok popularize phrases to the public, the question of ownership and trademark rights over such slogans becomes controversial, particularly with the rise of trademark trolls exploiting these trends. The dispute between Jools LeBron and Jefferson Bates over the phrase “Very Demure, Very Mindful” highlights these challenges. The evolution of social media continues to balance innovation with protection under the law.
Footnotes
