Trademark Awareness: Very Demure, Very Mindful

In this episode of Naming in an AI Age, NameStormers, Director of Ops Ashley Elliott and CEO Mike Carr discuss the complexities of trademarking viral phrases, using TikTok content creator Jools Lebron’s catchphrase "very demure, very mindful" as an example. 

Jools faced challenges trademarking the phrase for beauty products due to trademark trolls, including individuals who filed for the phrase before her. Mike explains that while catchphrases can be trademarked if used in commerce, they must be filed in specific product classes, and extensions are possible for up to 18 months. 

Common law usage rights can also apply if a creator proves they used the phrase first in commerce. However, trolls risk legal consequences if their intent is to profit from holding trademarks hostage. While some trends are fleeting, building a sustainable brand requires consistent content and careful planning, ensuring the trademark strategy aligns with long-term goals.

Chapters

• 0:00 Introduction
• 0:24 The Viral Rise of "Very Demure, Very Mindful"
• 1:59 Can You Trademark a Viral Phrase?
• 3:30 Trademark Classes and Intent to Use
• 4:49 The Problem of Trademark Trolls
• 7:01 Is It Worth Trademarking a Trend?

Transcript

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.