This summer, a video of Hailey Welch, the “Hawk Tuah” girl, inspired over 22 trademark applications. More recently, on August 2nd, TikTok creator Jools Lebron’s fifteen minutes of fame arrived when her video about maintaining professional makeup at work went viral. On August 20, an individual unrelated to Lebron named Jefferson A. Bates filed a service mark application for the phrase “VERY DEMURE .. VERY MINDFUL ..” for “advertising, marketing and promotional services related to all industries for the purpose of facilitating networking and socializing opportunities for business purposes.” Lebron responded eight days later by filing two of her own applications for “VERY DEMURE VERY MINDFUL.” This trademark battle begs the question of whether viral catchphrases should be trademarked, and if so, what happens when an unrelated party beats a creator to the punch?
First, viral catchphrases can be trademarked—kind of. A trademark is a unique attribute, traditionally a word, phrase, or symbol, that can be used to identify the source of a good or service. Essentially, trademarks are intended to protect consumers by ensuring they know the origin of the products they buy.
Trademarks can be valuable to content creators, such as Welch and Lebron, who are looking to build a brand off of their viral moment. Although they do not stop others from using your words, as many mistakenly assume, they can nonetheless protect their businesses by preventing others from using a similar mark to promote the same types of goods or services.
Because trademarks are fundamentally tied to consumer protection, trademark applications for viral catchphrases must be tied to the sale of tangible goods or services. However, if a content creator wants to secure the registered trademark to their viral tagline as soon as it explodes but before they merchandise it, they have that option. A user can file an Intent To Use trademark application with the USPTO prior to actual use of the trademark if they plan to use it in commerce within the next four years.
In the US, trademarks do not have to be formally registered with the USPTO to be valid and enforceable. An alternative way to secure trademark rights is through common law. The first use of a unique phrase, when used to indicate the source of a product or service, creates an unregistered common law trademark. Use rights of unregistered marks extend only to the geographic region where it is used or where its use naturally extends. However, the ubiquitous nature of the internet complicates the territorial determination of a common law trademark, and courts have yet to reach a consensus on the geographic limits of a trademark used on the web.
Registered trademarks, on the other hand, provide the owner with greater protection, including national use rights, federal jurisdiction over enforcement actions, and evidentiary presumptions of validity. Therefore, it behooves an entrepreneurial creator to formally file their tagline with the USPTO, as both Lebron and Welch have.
Opportunistic third parties who file with the USPTO first should not expect their applications to be approved automatically. The review process takes between 12 to 18 months on average, during which time the application may be rejected, and the viral moment may fade from our collective memory. Additionally, there are mechanisms in place that allow an unregistered senior trademark holder to intervene in the USPTO application process. If a creator started using their tagline in commerce before the third party filed her trademark application, these processes might allow the creator to challenge it. For example, if the third-party application is approved, a creator can file a notice of opposition within thirty days after the publication of an application to the Official Gazette. If successful, such a challenge could lead to the cancellation of the registration.
Though trademark law might be the last thing on creators’ minds when they hit record, savvy influencers looking to build a brand would do well to study its tenets to gain a basic understanding of how to protect themselves from opportunists should their big moment arrive.
Mariah Webb is a 2L at Wake Forest University School of Law. Before starting law school, Mariah spent a decade in the entertainment industry, specializing in classical theatre and Shakespearian performance. She received her bachelor’s degree from the University of Central Oklahoma, where she majored in political science.
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