Melissa Viviane Jefferson, better known by her stage name Lizzo, popularized the phrase 100% THAT BITCH in her hit song “Truth Hurts.” But are popular song lyrics able to function as a trademark for a line of clothing?
Lizzo thought so as her trademark holding company, Lizzo LLC, filed several applications for the phrase 100% THAT BITCH for a variety of goods and services including two applications covering clothing items. Lizzo used the phrase on clothing and websites where consumers can order the goods. However, the United States Patent and Trademark Office (the “USPTO”) refused the applications on failure to function grounds (i.e., the phrase would not indicate source and in turn would not function as a trademark). But in the precedential ruling In re Lizzo LLC, the Trademark Trial and Appeal Board (the “Board”) reversed the refusal, finding that consumers encountering 100% THAT BITCH in connection with clothing would associate the phrase with Lizzo and her music.
In order to register a trademark, it must have the capability to distinguish the goods or services provided by an applicant and indicate source. The USPTO may issue a failure to function refusal when the applied for mark is a common term or phrase that consumers often encounter with the applied for goods or services. And as a result, consumers would understand the term or phrase as conveying an ordinary concept or sentiment instead of functioning as an indicator of source. Further, applicants may be dead in the water as a failure to function refusal is an absolute bar to registration.
It can be somewhat straightforward to see a failure to function refusal coming. DRIVE SAFELY for cars, THINK GREEN for recyclable products, and PROUDLY MADE IN THE USA for razors are all commonly used phrases and readily convey information about the corresponding goods. And all were refused on failure to function grounds. But it’s not always so easy to anticipate a failure to function refusal.
What ordinary concept does 100% THAT BITCH convey? The author need not opine as the USPTO argued that as a result of widespread use, consumers would recognize the phrase as a message of female empowerment that does not indicate source. In support, the USPTO provided an online dictionary definition of the phrase, articles containing Lizzo’s statements that she did not originate the phrase, and several examples of use of the phrase in connection with clothing and related goods on retail websites.
By Lizzo’s own admission, the mark was derived from a phrase in an internet meme “I just took a DNA test, turns out I’m 100% that bitch.” But the Board noted that trademark rights are gained through use, not creation. And lyrics from songs are more likely attributable to those that sing them rather than songwriters.
Indeed, many screenshots of retail websites provided by the USPTO included direct references to Lizzo, Truth Hurts, or both. Other screenshots were taken from Lizzo’s own website, which featured genuine 100% THAT BITCH clothing. Further, Lizzo relied on responses to online takedown requests that specifically recognize 100% THAT BITCH as being associated with Lizzo.
The Board noted that Lizzo “elevated 100% THAT BITCH from what may have been a lesser known phrase … to a more memorable status.” In doing so, the Board found that consumers encountering 100% THAT BITCH in connection with clothing would associate it with Lizzo and her music. Therefore, it reversed the failure to function refusal.
Lizzo is not the first, and will unlikely be the last, musician to attempt to register song lyrics. Despite being a musician and a trademark practitioner, the author has never had the opportunity to do so, but welcomes the challenge. For those playing at home, MATERIAL GIRL, LOOK WHAT YOU MADE ME DO, and CALL ME MAYBE are just a few examples of phrases registered by popular artists. Can you guess by whom?
Lizzo sets an example for future artists that encounter similar refusals. By offering genuine goods and proactively enforcing trademark rights (e.g., through online takedown requests) Lizzo shows that it’s possible to overcome a failure to function refusal. It’s about damn time.
 The USPTO may also issue a failure to function refusal if use of an applied for mark is considered merely decorative or ornamental and therefore would not operate as a source indicator. A fulsome discussion about this topic can be found here: https://newsletter.bpla.org/ornamentality-when-eye-catching-isnt-distinctive.