Can You Trademark a Viral Phrase? Lessons from Jools Lebron’s Viral Phrase

Key Takeaways:

• Navigating Complexity: Trademarking a viral phrase like “very demure, very mindful” involves intricate legal and strategic steps

• Lengthy Process: The journey to trademark registration can be long and challenging but is essential for securing and enhancing a brand.

• Adapting to Trends: Staying ahead of evolving trends and making informed decisions is crucial for turning viral moments into enduring success.

Introduction: The Age of Viral Trends and Trademark Challenges

In today’s fast-paced digital world, viral trends can sweep across the internet in the blink of an eye. A recent example is the catchy phrase “very demure, very mindful,” popularized by TikTok content creator Jools Lebron. This phrase, which started as a light-hearted descriptor for Lebron’s makeup and attire, has exploded in popularity. From memes and storefronts to even baby names, it’s clear that the phrase has struck a chord with many. But as the phrase’s fame grows, so do the complexities surrounding its trademarking. Let’s explore the challenges of trademarking viral phrases and offer insights into how to navigate this intricate process.

The Rise of “Very Demure, Very Mindful”

If you haven’t encountered the phrase “very demure, very mindful,” you might not be spending enough time on TikTok—where Lebron’s video showcasing the phrase has gone viral. The term, initially used to describe her makeup and attire, has become a cultural phenomenon. It’s now used in various contexts, from fire departments acknowledging their responses to emergencies to people humorously attributing it to their graying hair. Some have even named their children after the phrase. This unexpected popularity has thrust the term into the spotlight and highlighted its potential as a brand.

Trademarking Trends: The Basics

Trademarking a viral phrase or catchphrase presents unique challenges. According to trademark law, a phrase can be trademarked if it is used in commerce—meaning it’s applied to products or services offered for sale. For instance, if Jools Lebron intends to use “very demure, very mindful” for a line of beauty products or entertainment services, she can file for a trademark registration with the U.S. Patent and Trademark Office (USPTO).

However, trademarking is not as straightforward as it seems. While Lebron might successfully register the phrase for cosmetics, others could still use it in entirely different product categories, such as clothing. Trademark protection is typically limited to the specific categories of goods or services for which the trademark is registered.

Filing Across Multiple Classes: Is It Worth It?

When considering trademark registration, you might wonder if it’s necessary to file across all possible classes of goods and services. The answer is nuanced. You can file for multiple classes, but you must have a bona fide intent to use the trademark in those categories. The USPTO allows applicants to file an intent-to-use application, which can be extended up to 18 months. However, failing to use the trademark within the specified time frame could result in losing the registration.

For someone like Lebron, who might be more focused on specific areas like cosmetics or marketing services, filing in every possible class might not be practical or necessary. Instead, it’s crucial to focus on classes where the phrase will be actively used and marketed.

Trademark Trolls and the Race to Register

The situation becomes even more complicated when trademark trolls enter the picture. These individuals or entities seek to register trademarks for the sole purpose of holding them hostage for licensing fees or reselling them. In Lebron’s case, she faces competition from individuals like Jefferson Bates, known for attempting to trademark famous phrases and trends.

When it comes to trademarks, the key consideration is the “likelihood of confusion.” This means that if another party has already used the phrase in commerce, they may have common law rights even if they haven’t officially registered it. However, proving prior use and establishing common law rights can be challenging and requires substantial evidence.

First Use vs. First to File: Understanding Precedence

One important aspect of trademark law is the concept of “first use.” If you can demonstrate that you were the first to use a phrase in commerce, you may have some legal rights even without a formal trademark registration. However, this is where things get murky. To secure strong legal rights, it’s often necessary to file with the USPTO. This registration provides clear, official recognition of your trademark rights, which can be crucial if disputes arise.

The Duration of Trademark Applications: A Long Road Ahead

Trademark applications can be a lengthy process. From filing to approval, the journey can span several months, or even years. This timeline poses a challenge when dealing with trends that may be fleeting. For instance, by the time a trademark is approved, the trend that inspired it might have already faded.

Despite this, early trademark registration can offer significant benefits. It provides a legal foundation to protect your brand as it grows and helps in establishing your rights against potential infringers. If a trend appears to have long-term potential, registering early can be a strategic move to safeguard your brand’s future.

Building a Brand Beyond a Trend

While leveraging a viral trend can be a powerful strategy, building a lasting brand requires more than just capitalizing on a single occurrence. Consistency and sustained engagement are key. Successful influencers and brands often follow up viral moments with ongoing content and interactions that reinforce their brand identity.

Lebron’s challenge will be to use her viral success as a springboard for creating a coherent and lasting brand. This involves not only securing trademark rights but also continuously engaging with her audience and expanding her brand’s presence across various platforms.

Transcription:

Ashley Elliott (00:10):

Well, hello and welcome to naming in an AI Age. Today we are going to talk about one of the latest internet catch phrases, very mindful, very demure, used by the TikTok content creator, Jools Lebron.

(00:24):

You see how I do my makeup for work? Very demure, very mindful

Ashley Elliott (00:28):

When describing her, specifically her makeup and her attire for work. I don’t know if you’ve seen the video. I know you’re not a TikTok fanatic.

Mike Carr (00:35):

I’m all there all the

Ashley Elliott (00:36):

Time. Oh, are you? Okay, that’s good to know. But basically, this is taken the world by storm and it’s really expanded, I think the meaning of the word demure. People are using it in really random contexts and as memes and as storefronts.

(00:50):

Do you see how I wear this hoodie first before I cuddle my cat? Very demure, very mindful.

(00:55):

See how I do this? I drink from the bottle. Very demure, very mindful.

(01:03):

Now you see how I did that? Very demure, very

(01:08):

Mindful, not yummy.

Ashley Elliott (01:11):

People are even naming their children demure after this. But here today we’re talking more about just the phrase, we’re going to talk about the events following this trend specifically in trademarking a name or a phrase that’s I guess gone viral. And so content creator, Jools Lebron, the one who created this, she recently tried to trademark the phrase Very Demure, Very Mindful for various entertainment services and beauty products with the U-S-P-T-O, but she ran into some trademark woes with some trademark trolls. So some people have tried to trademark her phrase and take the rights out from under her. But I guess my question, we work in the trademarking space a lot because of naming and just being adjacent to it. So I’m curious, can you trademark a viable phrase?

Mike Carr (01:59):

Well, you have to trademark something that’s used in commerce. Now, we’re not trademark attorneys, so we can’t give you legal advice, but we work with a law of trademark attorneys. And so the way trademark law works is if you have a catchphrase that you’re using on a brand for products, then yes, you can go ahead and file for trademark registration, but you have to do it for whatever you’re going to sell. And that doesn’t mean someone else could not use exactly the same phrase for a different category. So if Jools is most interested in her new cosmetic line, let’s say, well, she could file in class three, which is typically where you file for cosmetics, but that would not necessarily prevent someone else from filing the same phrase in a different class for like jeans, blue jeans. So the way trademark law works is it’s really on the likelihood of confusion. They want to reduce confusion out there in the marketplace. So Jools seems to have a lot of following on TikTok, and certainly the way she looks is a big part of her signature brand. So I could certainly see her in the haircare space, maybe in the jewelry space, maybe in the cosmetic space, using that very effectively. But she would have to file in those classes for those goods and services.

Ashley Elliott (03:30):

Can you file in all classes or does it need to be specific?

Mike Carr (03:34):

Well, you have to have a bonafide intent to use, so you can file intent to use ahead of time, and often you can get an extensions, and the extensions might be six months at a pop. And so we’ve seen some folks get like 18 months worth of time from when they actually file to when they actually have to start using the mark in all those classes of goods and services. And after some period of time, if you haven’t started using it, then you’re not going to get another renewal for another six months. The US PTO, the US Patent Trademark Office won’t grant you like that third, fourth, fifth extension necessarily. Sometimes they do, sometimes they don’t, at which time you would lose, right? So if you feel like you can provide a wide range of products across all the different classes of goods and services, and you’ve got to understand they range from things like software. So would Jools really be getting into the software space to things like industrial products, things that might be used in manufacturing? I don’t know if that makes sense for her. So she might not want to file in all classes, but there might be more than one that she would certainly want to take a look at.

Ashley Elliott (04:49):

According to the U-S-P-T-O and some recent articles, she would be fourth in line. So there are some people that have filed ahead of her. One specifically Jefferson Bates is apparently known for doing this of trying to trademark famous sports phrases and other things, writing on viral trends. Other people saw that he was doing this and said that they basically filed so that they could give it to her so that she would have rights in it. Really, with the rise of social media in general, does it matter who uses the name first? Who makes money off of it first? When it comes to a trademark, what’s precedence?

Mike Carr (05:24):

You have to sign an affidavit. It’s a legal document that says you have a legitimate intent to use the name and if someone can prove, like your lawyer can prove that not only you not have a legitimate intent, but your whole purpose for filing for the trademark is to hold someone like Jools’s hostage, like for a ransom or a licensing fee. And you have this history, right? You’ve done this before over and over again. Not only might you lose in a legal battle, you might go to prison, they can put you in jail. I would suggest that Jools might have a leg to stand on. Also, there’s something in Trademark Law that has to do with first use. So if you can show that you’re using the phrase first in commerce and you really started promoting it and maybe even building a following, so building some street cred and some advertising and marketing credentials ahead of anybody else, which it sounds like she certainly did, you also have then certain common law usage rights. You never have to file for the name. If you can just show that you were using it before somebody else, then sometimes that actually gives you precedent over anybody that then tries to come in after the fact and file from underneath you. Now, the problem there is you actually have to show that you’re using it in all the different categories, all the different servicing products that the person that files after you has filed in

Ashley Elliott (07:01):

This trademark approval process really could take longer than the trend actually lasts. I mean, because some of these are fleeting over time. So what would the benefit be of moving forward with a trademark application if it is a fleeting trend?

Mike Carr (07:14):

Well, we certainly have seen clients in the past just start using a name in commerce because of that, right? Because they’re trying to capture a fad. If it looks like it’s going to be more than a fad, then they file their trademark application.

(07:32):

The danger in doing that, of course, is you don’t have quite the legal precedent, arguably as someone else that comes in after you and actually files a paperwork with a patent trademark office. The last thing I want to mention is it’s very hard to build a brand quickly. Right now, I know there are fads and things that pop up on TikTok and you get millions of views, and then before you know it, it’s all faded away. You may or may not be able to build a brand off a single occurrence, but in most cases you need to have several of those TikTok virals kind of things where really a million people see it, and then next month you have another short that goes viral and another couple million people see it. It’s that consistency over time that you really want to tap into to start to really build the awareness and the preference that a strong brand is all about.

Ashley Elliott (08:28):

Being intentional about your trademark filing is always a good thing. It’s very mindful, it’s very demure, it’s very appreciated, it’s very lawful, and you have some backing to your strategy at that point, especially in commerce. So Jools, we’re rooting for you. We help you get through and join us next week as we take on another trend.

Mike Carr (08:50):

See you guys.