TikTok user Jools LeBron (@joolieannie) took the internet by storm when she posted a video encouraging people to be very demure and very mindful in applying their makeup. The post went viral and Jools' following skyrocketed to over 2 million followers on TikTok alone. On the heels of her viral fame, Jools posted that the video had changed her life almost overnight.
But that celebration was interrupted by a challenger attempting to cash in on Jools' viral phrase. On August 20, 2024, not even a month after Jools' video was posted, an individual named Jefferson Bates applied to register the trademark VERY DEMURE . . VERY MINDFUL . . in connection with certain advertising and marketing services.1 In a now-deleted video, Jools despaired over Bates taking her intellectual property – and the internet joined in her frustration. However, all is not said and done for Jools and neither she nor the internet should assume that Bates' application will work the way they expect.
Trademark Rights are Created by Use in Commerce, Not Registration
A prevailing narrative among those viewing this controversy is that Bates has effectively cut off Jools from using VERY DEMURE VERY MINDFUL by applying for federal registration before she did. However, that is not necessarily the case.
Trademark rights are created by use in commerce, which means "the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark."2 The body of case law involving the standard is varied and complex, involving questions of interstate commerce. As a general rule, the person who uses a mark first in interstate commerce has priority over any later user of the mark in their market.
What this means for Jools is that the mere fact that Bates beat her to the trademark office does not mean that she is foreclosed from using VERY DEMURE VERY MINDFUL as a trademark. She may have priority over Bates if she can show first use in commerce prior to Bates' priority date.
Trademark Rights are Associated with Specific Goods or Services
Some concerned onlookers have been under the mistaken impression that Bates' trademark application would block Jools from using VERY DEMURE VERY MINDFUL at all. Not so. Use of a trademark in one market does not necessarily preclude someone from using the same or similar trademark in a different market.
This is because trademark rights exist only in connection with specific goods and services. For instance, Apple uses the trademark APPLE in connection with various technological goods and services, among others. At the same time, however, there are many registered trademarks for the term APPLE in association with other goods and services such as power tools used for maintaining archery equipment and vinyl disposable gloves.
In Jools' case, Bates has applied to register the VERY DEMURE . . VERY MINDFUL . . trademark in association with certain advertising services. Thus, there is an argument that even if Bates has priority over Jools in that space, Jools may still be able to use the mark on products such as apparel or makeup.
There are some exceptions to this general rule, and the question of whether a mark is likely to be confused with another is a complicated, fact-intensive inquiry. Experienced trademark counsel is essential in helping trademark owners discern the boundaries of their rights.
Trademark Trolls, Unfortunately, Are Out There
Examining Bates' history of filings at the USPTO shows that he has tried to ride the coattails of famous phrases for quite a while. He has applied for various phrases associated with famous sports teams such as the Broncos3 and the Commanders4 several times. In some instances, his applications are abandoned for failure to respond to USPTO office actions refusing his applications. In others, the owners of the marks he is trying to encroach on have filed opposition proceedings against his applications.5
The moral of the story here is that trademark trolls rarely win. In some cases, they go away on their own through their own failures. In others, trademark owners can take steps to cut them off at the pass. Trademark owners facing this problem can examine several options such as a cease-and-desist letter, a letter of protest, or an opposition proceeding against the offending application.
Jools Got "A Team" and You Should Too!
In more recent updates, Jools has reassured fans that she has a team on her side – implying trademark counsel – and the situation is being handled.6 This is a wise move on Jools' part as competent trademark counsel can help cut through the noise and go to bat for your intellectual property rights. If you are facing a similar problem, your first step should be a consultation with an experienced trademark attorney.
Dunlap Bennett & Ludwig's experienced trademark lawyers are intimately familiar with the complex laws, regulations, and case law involved in trademark disputes or registration. To learn more about Dunlap Bennett & Ludwig and how we can help you with trademark issues, visit our Small Business and Inventor Hub.
Footnotes
1 https://tsdr.uspto.gov/#caseNumber=98706752&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
2 15 USC § 1127
3 https://tsdr.uspto.gov/#caseNumber=97538019&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
4 https://tsdr.uspto.gov/#caseNumber=97887517&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
5 https://ttabvue.uspto.gov/ttabvue/v?pno=91293041&pty=OPP
6 https://www.tiktok.com/@joolieannie/video/7407878100719045930
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