Taylor Osher recently authored a piece in PR News about the various legal frameworks that online content creators should take into account when considering registering a trademark for a viral moment. In the article, titled “Branding a Viral Moment: The Complexities of Trademarks for Famous Phrases,” Taylor delves into the U.S. Patent and Trademark Office (USPTO)’s “failure to function” doctrine and what it means in practice, using examples of viral phrases including “100% that bitch,” “girl dinner,” and “very demure…very mindful.”
Taylor explains that the USPTO and its Trademark Trial and Appeal Board (TTAB) are increasingly rejecting trademark applications for iconic phrases using the “failure to function” doctrine as an explanation, on the grounds that the phrase is used in too widespread or generic of a context and therefore is not easily associated with a single brand or product.
Taylor adds that this doctrine poses a major roadblock to content creators looking to trademark their viral content. “Ironically, the viral nature of a phrase, the key to its popularity, can undermine its ability to function as a trademark,” she writes in PR News.
Taylor uses the example of Lizzo’s line “100% that bitch” from her hit “Truth Hurts” to demonstrate the role that fame, reputation and public association play in securing a trademark. Lizzo’s request was initially denied by the USPTO, but 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,” Taylor writes.
By contrast, Taylor explains that lesser-known creators, including TikTokers Olivia Maher and Jools Lebron, have not had the same success in securing registrations for their respective viral moments, “girl dinner” and “very demure…very mindful,” highlighting the importance of timing.
“Obtaining a trademark for a viral phrase can be complex and requires careful consideration of distinctiveness, commercial use, and potential conflicts with existing trademarks,” Taylor adds. “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,” she concludes.
