How content creators can brush up on trademark law to protect their catchphrases

Every content creator dreams of shaping culture with something as simple as a catchphrase—yet often the last thing on their mind is future-proofing it. 

Jools Lebron went viral this month with her videos demonstrating decorum when doing everyday activities that include her tagline: "Very demure. Very mindful."

Yet over the weekend, she posted—and then deleted—a video revealing that a person named Jefferson Bates beat her to apply for the trademark for the phrase. 

So what does this mean for Lebron and content creators like her? 

First, it is important to understand the difference between a trademark and the federal registration of a trademark. A brand owner can have and use its brand name, slogan, catchphrase or logo and never register it with the US Patent and Trademark Office. The owner’s rights in that case are based on common law, says Jason Lott, managing attorney for Trademarks Customer Outreach at the Patent and Trademark Office.

Trademark rights in the US are based on use, i.e. the first person to use the trademark to indicate the source of specific products and services, and continuing to use it as a trademark. 

The reason to trademark or copyright a phrase would be to license it to authorised partners and to protect it from being used for profit by others.

“A trademark is not blanket ownership of a word or phrase; the function of it is to say to consumers, ‘When you see this, you think of me and this product or service I provide,’” says Lott. 

Many people incorrectly assume that if a phrase is trademarked, no one else can use it except the owner. However, a trademark only provides protection in connection with an owner’s specific goods or services, and goods and services related to them.

Trademarks are important when an individual or brand wants to use goods or services for marketing, advertising and promotion, says Megan Hueter, head of digital strategy and innovation at MikeWorldWide. 

That said, they must meet certain criteria in order to obtain one. For example, to trademark a catchphrase, it needs to be unique, not generic, and used in a way that distinguishes the creator's brand or products from others. 

“This can be tricky to determine when a phrase travels the internet at viral speed,” says Hueter. “But it can be done.” 

There is a difference between the right to use a trademark and the right to register a trademark. The USPTO is only concerned with whether someone has the right to register it, not use it, Lott says.  

“In the case of influencers, they can have their common law trademark and use it. They are building up rights,” he says. “We say the rights belong to the person who is actually using it.” 

The process to register a trademark is a lengthy one, and can take on average 12 to 18 months. Several people can apply to register at the same time and each application will be thoroughly examined.  

In this case, Lebron can still submit an application, but because Bates submitted his first, it will be the first to be examined. 

“There are points in the process where the true brand owner who has stronger common law rights can pop up and say, ‘Whoa, you are not the owner here, you should not be able to register it; I have been using it, so I can register it,’” says Lott.  

Lebron’s and Bates’ attorneys could have a conversation that leads to Bates abandoning his application to let Lebron’s go forward. Third parties may also file a letter of protest, if they have arguments that the examining attorney may consider, or file a notice of opposition with the Trademark Trial and Appeal Board if they seek to challenge a trademark application that has been approved for registration.

A trademark was registered. Now what?

Once a trademark is registered it can still be challenged. People can file a cancellation proceeding against a federally registered trademark, which also goes through the Trademark Trial and Appeal Board within the USPTO. Board cases may also be appealed in federal district court or through the US Court of Appeals for the Federal Circuit and can make their way to the Supreme Court.

“Jools in particular may have great position on the grounds of prior use,” says Hueter. “From what I understand, Jools was the first to use this phrase and has done many brand deals before the trademark was even filed.” 

If someone does not challenge it, trademarked phrases can be used in various ways as long as the use does not suggest an association between the user and the trademark owner, says Liz Corradino of the law firm Moses Singer. Corradino is the intellectual property lawyer for the PR agency Hunter.

“However, whether a use crosses that line can be a subtle legal question—best to steer clear without checking with your lawyer first,” says Singer. “In rare cases, even relatively short phrases can be protected by copyright.”

Enforced limitations on a registered trademark will come from commercialisation in connection to using the phrase in conjunction with goods or services.

“Using phrases in social media posts are not necessarily considered commercialization,” says Hueter. “But printing the phrase on a T-shirt or sweatshirt might infringe. Lawyers can help figure this out.”

How influencers can prepare

Edelman EVP of influencer marketing Brooks Miller says creators themselves are entrepreneurial when it comes to monetization in emerging technologies. They are monetising their name and likeness within the AI space, podcasting, merchandising, product creation and, of course, they are pioneers in monetising content creation on social media.

“Trademarking a catchphrase is more in the traditional realm of marketing, much like how a brand would trademark their tagline,” Miller says. “If creators have a knowledge gap it’s because they’ve been able to sustain a living using revenue streams that big brand marketing isn’t used to.”

If a creator sees momentum with a true catchphrase that they want to protect, they should seek legal counsel, even just visiting websites like USPTO.gov or copyright.gov, experts say. The USPTO website has free resources, such as a trademark-registration toolkit and programming for people who are new to trademarks and IP, some of which teach influencers trademark basics. The organisation also has a trademark assistance center that answers questions but does not give legal advice, and it has patent and trademark resource centers at libraries across the country.

“When a video starts gaining traction, analyze it for any intellectual property you can secure,” says Ansley Williams, head of influencer for Ogilvy North America. “Protecting your creative assets now will set you up for long-term success.”

It’s wise for influencers to think about trying to get trademark protection as soon as possible, even before a phrase goes viral. Williams says another way influencers can stay informed is by building or joining a community that addresses both the challenges and successes of content creation to seize opportunities instead of missing them.

Lott adds that influencers should think about themselves as businesses.  

“Every business has a trademark,” he says. “Influencers should think about: What is the thing I use to help customers identify me in the marketplace? What is my brand name, slogan or logo?"

To help influencers whose business or legal knowledge has not caught up to their newfound popularity, partner agencies should ensure they are answering questions that creators may not know to ask, says Zack Durnack, a digital strategist at MSL US

“Influencers often don’t have the protection or education they should once they get thrust into the spotlight in such a short amount of time; they simply don’t know what they don’t know, which Jools herself admitted in her initial video where she revealed she missed out on the trademark,” says Durnack.

Legal experts and trademark specialists have been sharing videos with their advice and guidance to Lebron.

@imani.law So many of you tagged us in @@Jools Lebronvideo regarding the very demure very mindful trademark. Here is our analysis! Jools, we’re here for you! #i#imanilawt#trademarklawyert#trademarkattorneyt#trademarksv#verymindfulv#verydemurej#joolslebronv#verymindfulverydemuret#trademarkapplicationt#trademarkinfringementt#trademarklawfirmt#trademarkregistrationb#brandprotection ♬ original sound - Imani Law, LLC & Trademark Law

“This may help educate a wide swath of influencers at risk of encountering similar situations,” says Durnack.