After a 3½ year battle with the United States Patent and Trademark Office, Grammy award-winning artist Lizzo has successfully obtained a reversal of a decision denying her a trademark registration for the mark 100% THAT BITCH.

The phrase was popularized by the song, “Truth Hurts,” first released in 2017, and its iconic opening line – “I just took a DNA test, turns out I’m 100% that bitch,” – entered the internet zeitgeist as the song rose to number one on the U.S. Billboard Hot 100 chart where it remained for six weeks.

Despite this popularity, the Examining Attorney  was not convinced that the phrase functioned as a trademark eligible for registration.

Below, we explore the Examining Attorney’s reasoning, and how Lizzo overcame the objections that her phrase was common and ordinary.

Defining a Trademark

A trademark’s function is to identify and distinguish the goods or services of one source from the goods or services of another. Under the Lanham Act, if a mark does not operate to indicate the source of the owner’s goods or services, then it does not meet the statutory definition of a trademark and may not be registered.

Intent to use a phrase as a trademark will not overcome the threshold issue of whether the mark indicates source. In its February 2, 2023, decision, In re Lizzo LLC, the Trademark Trial and Appeal Board explained, “the mere fact that a combination of words or a slogan . . . is adopted and used by [an applicant] with the intent to function as a trademark does not necessarily mean that the slogan accomplishes that purpose in reality.”

A proposed mark must function as an identifier of the source origin of the goods/services to which it is attached, and in analyzing whether that function has been met, the Board will focus on consumer perception of the mark, i.e., does the relevant consumer perceive that the phrase indicates one particular source? If instead, consumers perceive the proposed mark as a common phrase, or one that is used by various sources to convey ordinary, familiar, or generally understood concepts or sentiments, the federal trademark application will be rejected.

In re Lizzo LLC

The Examining Attorney’s argument in rejecting the application rested on the contention that 100% THAT BITCH operated as a common “message of self-confidence and female empowerment used by many different entities in a variety of settings” that was more likely to be viewed for the meaning of the words and not as an indicator of source.

As supporting evidence for rejecting Lizzo’s application, the Examining Attorney attached a number of screenshots from third-party commercial web pages showing the wording 100% THAT BITCH appearing on a variety of goods and services, asserting that just because the phrase is “a lyric in the singer’s song does not entitle [Lizzo] to appropriate for [herself] exclusive use of the phrase.”

Further, the Examining Attorney argued that Lizzo did not originate the term, but merely popularized it, identifying articles discussing Lizzo’s admission that the phrase was taken from a 2017 Twitter meme.

The Board explained that the Examining Attorney’s arguments, however, were fundamentally flawed. As, “trademark rights are not gained by creating a mark, but through use of the mark” in commerce, the fact that 100% THAT BITCH was first created by another party is of no consequence. Rather, the analysis rests on consumer perception, and whether the applicant popularized the proposed mark in commerce such that the applicant is uniquely associated with the mark.

The introduction of internet evidence by the Examining Attorney, purportedly showing the widespread use of the phrase by third parties, backfired. Of the ten screenshots submitted, three were from Lizzo’s own website, and others offered unauthorized and unlicensed merchandise specifically referring to Lizzo or her song “Truth Hurts.”

Lizzo’s attorneys argued, convincingly, that 100% THAT BITCH:

functions precisely the way a trademark is supposed to function, namely, identifying Lizzo as the source of goods…the refusal to register a mark that is so clearly being used by others to create a false association with Lizzo and to trade off of her goodwill…is directly at odds with the fundamental principles of the Lanham Act.

The Board also recognized that the Examining  Attorney was unable to present any evidence of the use of the term 100% THAT BITCH prior to the release of “Truth Hurts.” Instead, the Board agreed with Lizzo that much of the evidence of third-party use specifically seeks to associate the goods with Lizzo, her music, and the lyrics from the hit song.

Ultimately, the Board, in viewing the totality of the evidence, determined that 100% THAT BITCH is not a common phrase, but rather sufficiently functions to identify Lizzo as the source of the goods upon which the mark is attached, and the refusal to register the mark was reversed.

Conclusion

Lizzo is not the first celebrity to successfully register a phrase as a trademark — Paris Hilton famously registered “That’s hot” as a trademark in 2007, and boxing announcer Michael Buffer obtained a federal registration for “Let’s get ready to rumble!” in 1995.

Lizzo’s success reinforces the notion that use in commerce and consumer perception of a mark are the keys to proving that an otherwise common term is a source indicator.