TikTok sensation Jools LeBron went viral when her phrase “Very Demure, Very Mindful” took off, garnering her millions of followers. However, her celebration was interrupted when Jefferson Bates filed to register her now-famous phrase. In a tearful post, Jools despaired over the fact that someone else had filed an application for her signature phrase (and a number of folks tagged us in it!) While it may seem like this application would prevent Jools from using the phrase, U.S. trademark law doesn’t work that way. Let’s dive in:
Trademark Rights: Use in Commerce vs. Registration
One common misconception is that filing a trademark application automatically gives the filer exclusive rights to the mark in any form. However, in the U.S., trademark rights are established through actual use in commerce, not just by filing with the U.S. Patent and Trademark Office (USPTO). This means that if Jools can prove she used “Very Demure, Very Mindful” commercially– in association with offering or selling products or services– before Bates’ filing, she may still have the superior claim.
The Trademark Act defines use in commerce as the bona fide use of a mark in the ordinary course of trade. In other words, Jools needs to show that her viral phrase was associated with her brand and was used in a business capacity before Bates’ filing– which, with her log of brand deals, should be something she can back up.
Trademarks Are Linked to Specific Goods or Services
Another key aspect of trademark law is that it doesn’t grant universal protection across all industries. A trademark is only protected within the specific category of goods or services for which it is registered. In Jools’ case, Bates applied for the trademark in the advertising and marketing services category. This means that even if Bates secures the trademark in that sector, Jools could still register and use the phrase for products like apparel or makeup without conflict.
For example, the well-known brand Apple holds trademarks in the technology sector, but the same name is used for completely different goods, such as disposable gloves and even archery tools. This principle protects businesses from overreach, ensuring that a trademark holder can only enforce rights within the industry of their registration.
Trademark Trolls and Their Legal Limitations
Unfortunately, “trademark trolls” like Bates are becoming more common. These “Trademark Trolls” attempt to profit from someone else’s success by registering popular phrases with no intention of legitimate use. A quick review of Bates’ USPTO filings reveals a history of applying for well-known phrases linked to famous sports teams and other high-profile entities. Many of his applications have been abandoned due to failure to respond to USPTO objections, or they were blocked by opposition from legitimate trademark owners. For people like Jools, there are legal avenues available to combat trademark trolls, such as sending cease-and-desist letters, filing letters of protest with the USPTO, or initiating an opposition proceeding to prevent the trademark from being registered. While that’s a good thing, it creates unnecessary expense for the real rightsholder.
The lesson here is that trademark trolls often fail. Whether through their own negligence or due to legal challenges from trademark owners, their claims rarely hold up.
Legal Action: What Jools (and You) Can Do to Protect Trademark Rights
Jools recently updated her followers, assuring them that she has legal counsel handling the situation. This is a smart move. Trademark law can be complex, and having experienced attorneys on your side is crucial to protecting your intellectual property. A trademark attorney can help navigate complicated legal waters, ensuring that your brand is protected from opportunistic filings like Bates’ (or from other bad actors like domain squatters!).
If you find yourself in a situation similar to Jools’ trademark issue, the first step is to consult with a qualified trademark attorney. They can help you evaluate your use of the trademark, file the necessary documentation with the USPTO, and even oppose improper trademark applications filed by others.
Conclusion: Protecting Your Brand Before there’s an Issue
Trademark disputes like Jools’ can be frustrating, but they highlight the importance of protecting your brand early. Understanding that trademark rights are linked to use in commerce and to specific industries can help you safeguard your intellectual property, even if someone else files for registration first. By working with experienced trademark counsel, you can take proactive steps to protect your business and ensure that others don’t capitalize on your hard-earned success.
If you’re facing a similar trademark issue or want to secure your intellectual property rights, contact an experienced trademark attorney. We’ll help you protect your brand and guide you through every step of the trademark process.
