In the age of social media, phrases can go viral overnight. Such viral moments have become a staple of online culture—shaping trends, influencing language, and even driving consumer behavior. Their viral nature can make phrases powerful cultural assets, leading individuals and businesses to try to protect them as trademarks and cement their reputation in culture. Registering a phrase as a trademark however can be challenging.
In recent years, the U.S. Patent and Trademark Office (USPTO) and its Trademark Trial and Appeal Board (TTAB) have grown increasingly conservative, frequently rejecting applications for phrase marks under the “failure to function” doctrine. This can arise when a phrase has become so widespread that it no longer serves as a source identifier of goods and services. Ironically, the viral nature of a phrase, the key to its popularity, can undermine its ability to function as a trademark.
The "Failure to Function" Doctrine
Under the “failure to function” doctrine, a mark fails to function as a trademark if it does not clearly identify the source of goods or services. The USPTO’s Trademark Manual of Examining Procedure outlines the factors that examiners must consider, including whether the phrase is merely a common expression or sentiment that is widely used by others in a non-trademark sense. When a phrase is used in a widespread or generic manner, it is difficult for consumers to associate it with a single source of goods and services, thereby weakening its potential as a trademark. The USPTO has rejected trademark applications for this reason, emphasizing that popular phrases used in memes are often seen as “commonplace” rather than as indicators of source. This presents a significant hurdle for those seeking to trademark viral content.
The Case of "100% THAT BITCH"
A high-profile example of this was the pending trademark application for "100% THAT BITCH" filed by the artist Lizzo for use on clothing. Initially, USPTO rejected the mark for failure to function as a trademark. The examiner asserted the phrase was commonly used as a motivational expression, making it unlikely for consumers to associate it with Lizzo’s goods. Moreover, examples of third-party usage showed the phrase had become widespread, further complicating Lizzo’s efforts to show such consumer association.
Lizzo responded that third parties were trading off the goodwill she had created through her hit song “Truth Hurts,” where the phrase "100% That Bitch" gained fame. However, the USPTO maintained its position stating:
“The consuming public is used to encountering the phrase 100% THAT BITCH, as both ornamental matter on a wide variety of goods, including clothing items, and as a commonly-used, often [humorous] phrase, to convey self-confidence. Further, a trademark owner who fails to exercise sufficient control over licensees or franchisees may be found to have abandoned its rights in the mark.”
Lizzo’s failure to control use of the phrase highlights a unique challenge to protecting viral phrases in trademark law. Because such phrases are often created and shared organically by millions of users across various platforms, sometimes without credit to the original creator, it can be impossible to control the use of a phrase once it goes viral. This almost instantaneous and widespread use can prevent anyone (including the original creator) from claiming ownership of a viral phrase.
Despite this, Lizzo won her appeal of the examiner’s rejection. The TTAB acknowledged that while Lizzo did not originate the phrase, her fame had popularized it to the extent that consumers associated "100% THAT BITCH" with her. This case demonstrates how fame, reputation and public association play a crucial role in successfully registering a viral phrase.
The Challenges for Lesser-Known Creators
Creators with less notoriety, however, may have difficulties in connecting their viral phrase with their own brand identity. For example, the viral phrase “Girl Dinner” gained traction in May 2023 after TikToker Olivia Maher coined the term in a video. And even though Maher's U.S. Olympian sister Ilona Maher, may be more famous, Olivia has now earned her day in the sun. The video, which currently has over 2.7 million views has been shared by over 19 thousand people and copied by various other TikTokers, each with hundreds of thousands, if not millions of views on their videos.
In December 2023, Maher filed a trademark application for “GIRL DINNER” for clothing and providing online non-downloadable videos related to food. The USPTO refused the application, in part based on a failure to function as a trademark. The USPTO asserts that “GIRL DINNER” is a widely used message “commonly used in services in the field of food to refer to a meal and conveys a common expression of a meal inspired by what many women might make for themselves when dining alone.” It’s notable that much of the evidence cited by the examiner either was dated after Maher’s video and/or mentioned the phrase’s TikTok popularity.
The Time Factor
Maher’s application for “GIRL DINNER” highlights how important timing and enforcement can be in successfully securing a trademark. Because trademark rights are obtained through either being the first to use a mark in commerce or being the first to file an application for registration, filing for a trademark early can be vital when a phrase takes off and the creator has yet to use the mark in a commercial manner.
A recent example of this involves the viral phrase “Very Demure…Very Mindful…” which gained fame after creator Jools Lebron posted a video using the phrase on Aug. 05, 2023. The video has since amassed over 53 million views and has been re-created by celebrities such as Jennifer Lopez, Kim Kardashian, and Lindsay Lohan.
On Aug. 20, 2023, however, an applicant named Jefferson Bates filed an intent to use application for the phrase “VERY DEMURE.. VERY MINDFUL...” for advertising and marketing services. This filing led to Lebron posting a (now deleted) video with the words “When you didn’t trademark fast enough” and expressing her frustration over feeling as if she “dropped the ball” on protecting her phrase. While the case of “Very Demure… Very Mindful…” is still ongoing, Lebron’s fight for trademark rights in a phrase she created underscores the importance of timing and policing unauthorized use.
Obtaining a trademark for a viral phrase can be complex and requires careful consideration of distinctiveness, commercial use, and potential conflicts with existing trademarks. While having a registered trademark can be a powerful tool for protecting and monetizing a popular expression, applicants should be prepared to navigate the legal intricacies that come with branding something that has captured the public’s attention. Consulting a trademark attorney early can help ensure a viral phrase is appropriately protected so that it may be used to its full potential.
Taylor Osher is an associate at Stubbs Alderton & Markiles, LLP.