Written by: Nick Holmes
In today’s world of social media fame, it is easier than ever for trends such as slogans or sayings to become immensely popular overnight. Unfortunately, it has also become easier than ever for squatters, companies, and bad actors to attempt to profit off these trends by attempting to secure intellectual property rights, namely, a trademark.
Jools Lebron, a TikTok creator with over 2 million followers, has popularized the phrase “very demure…very mindful” by describing how to be “demure” and “mindful” during specific events, such as at a job interview or while boarding a plane. The phrase has become so popular that celebrities, sports teams, and even restaurant chains such as Chili’s, have begun to use the phrase. While there is no inherent way to legally protect a combination of words on their own, using the phrase in connection with goods and/or services can make the phrase eligible for trademark protection. A trademark is a way for a company or individual to protect a brand name, slogan, phrase, or logo in connection with goods and/or services. Think “Just Do It” for shoes or “In Here, It’s Always Friday” for restaurant services. When you think of these phrases, you also think about the goods and/or services associated with the phrase.
On August 20, 2024, much to the dismay of Jools Lebron, a man named Jefferson Bates filed a trademark application for “Very Demure..Very Mindful..” in connection with “Advertising, marketing and promotional services related to all industries for the purpose of facilitating networking and socializing opportunities for business purposes.” The application was filed as “intent-to-use,” meaning the Applicant has not used the phrase yet in connection with the services, but has a bona fide intention to do so. (emphasis added). In trademark law, a filing date enters you into the queue for examination by an Examining Attorney, but, eventually, the Applicant will need to prove they are using the mark in connection with the applied-for services. Further, the mark must “function” as a trademark to receive protection.
While Lebron took to TikTok to express the disappointment in not thinking of applying for a trademark, there are remedies possible to either obtain the mark, or prevent the mark from registering. If the mark is approved by the Examiner (which is not a guarantee, as the Examiner can issue an “office action” on the mark, which requires a sufficient response from the Applicant), there is a Publication period of 30 days, where anybody who believes they will be harmed by the mark registering can institute a Notice of Opposition, which is an administrative proceeding, much like a court trial, where the Opposer presents evidence as to why the mark should not register. Lebron presumably has been using the phrase longer than Bates and has used the phrase in connection with advertising and marketing material, which, as discussed above, is key in proving trademark usage. Lebron’s best argument is that she has priority in the mark, even though she have not filed a trademark application formally with the United States Patent and Trademark Office. The United States is a first-to-use trademark system, so, even though Bates has the earlier filing date, the date of first use is what can control in a dispute. Further, Lebron can argue that Bates had a lack of a bona fide intent to use the mark at the time of filing. As mentioned above, the Applicant in an intent-to-use application confirms, under the penalty of perjury and fraud, that they had a bona fide intent to use the mark in commerce at the time of filing of the application. Based on Bates’ record of other filings (Broncos Country, Let’s Ride, among others), Bates appears to be a squatter who attempts to profit off viral trends, with no actual intent to use the mark. Unfortunately for Lebron, if Bates decides to fight the Opposition, the proceeding can take upwards of 1-2 years and could be quite costly.
Another option for Lebron is to negotiate a deal with Bates to secure rights in the trademark application, likely by providing compensation. This scenario occurred when Tiger Woods’ new company “Sunday Red,” purchased the “Sunday Red” trademark from the rights holder and assigned the mark to Woods’ new company. It is unclear if Bates would be willing to pursue this option, or just how much he could ask for.
While typically not on the mind of content creators or the average consumer, the importance of filing a trademark application before a phrase becomes popular is spotlighted. Trademark applications are relatively inexpensive, with a trademark application having a fee of $250 per class (not including potential attorney’s fees). Many times, it is impossible to know whether a phrase or trend will become popular. Sometimes phrases catch on, and sometimes they don’t. Take Hailey Welch for example, known for her saying “Hawk Tuah” among other NSFW wording. Her internet popularity and fame has skyrocketed, all based on one phrase said during an innocuous social media interview. She also ran into trademark issues, with several applications for the saying being filed before she was able to file an application herself.
Whether it was lack of foresight or understanding of how to protect an asset such as a phrase, Lebron is now unsure if she will be able to continue to use her phrase in connection with her predicted goods and/or services. Luckily for her, there are strong arguments in her favor as to why Bates’ application should not register as a trademark registration. However, what could have been a $250 trademark application has now turned into a potentially costly and time-consuming endeavor that has no guarantee of success. Unfortunately for Lebron, this trademark calamity is anything but demure.