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Alexandra Roberts, a law and media professor at Northeastern, says there are still ways for Lebron to challenge the third-party trademark application.
Jools Lebron, a Chicago-based social media content creator, gained fame — and 2 million TikTok followers — when her “very demure, very mindful” quote went viral.
The phrase used to describe her makeup, hairstyle and perfume was quickly embraced by other influencers, celebrities and politicians. She even appeared on “Jimmy Kimmel Live.”
Lebron never anticipated, however, that it would also bring legal and emotional challenges.
But Lebron’s sudden success hit an unexpected snag last week when a man named Jefferson Bates reportedly filed an intent to trademark her viral catchphrase for use in marketing, advertising and promotion.
In a now-deleted TikTok video, a tearful Lebron reportedly blamed herself for not first securing the trademark.
“I feel like I did it wrong,” she said. “I just feel like I dropped the ball.”
Despite Lebron’s concerns, Alexandra Roberts, a law and media professor at Northeastern University, says that all hope is not lost. Lebron still has options to challenge the third-party trademark application, she says.
In this case, Roberts says, Bates filed an “intent-to-use” application, meaning he plans to use the phrase in the future. Although he hasn’t used the phrase in commerce, Roberts says, he essentially claimed first rights by signaling his intent.
There are, however, exceptions to the trademarking rules, Roberts says.
The U.S. Patent and Trademark Office can refuse to register a trademark if the phrase is closely associated with a specific person. For instance, the singer Lizzo successfully trademarked the phrase “100% That Bitch” despite others using it commercially first, because she demonstrated that the phrase was already strongly linked to her public persona.
If Lebron can demonstrate that the public associates “very demure, very mindful” with her, Roberts says, she could assert her rights and potentially establish priority, even though she wasn’t the first to file.
A key consideration in trademark law, Roberts says, is whether trademarking something would deceive or confuse consumers. If Bates starts selling items or providing services using this trademark, consumers might think that they are somehow supporting Lebron, which wouldn’t be true.
This is what the U.S. Patent and Trademark Office is trying to prevent, Roberts says.
Lebron could also file her own trademark application, Roberts says, covering the specific categories she plans to use it for — for example, cosmetics or branded merchandise.
Different entities can hold trademarks for the same word in unrelated industries, like Dove soap and Dove chocolate, or Yale University and Yale locks, because consumers can distinguish between them.
When the hashtag #Metoo turned into a tremendous movement, Roberts says, many people used it and applied for a trademark registration.
“What if we had a lipstick shade and we called it #Metoo,” Roberts says. “We can apply to register that as a trademark for a lipstick.”
However, because the third party’s application is vague and expansive, she says, it could directly compete with Lebron’s potential business interests, leading to further legal friction.
There is another exception to trademark law, Roberts says, involving common expressions that consumers don’t link to a specific brand. For instance, when Volvo tried to trademark the slogan “Drive safely,” the U.S. Patent and Trademark Office rejected it, ruling that such a widely used phrase can’t be exclusively owned.
“Sometimes, for phrases like ‘Black Lives Matter,’ you get that kind of refusal, and that’s called a failure-to-function refusal,” Roberts says.
It is possible that the trademark office could decide that “very demure, very mindful” could not be trademarked at all, she says, because the phrase has become a widespread expression.