The latest viral TikTok trend encourages us all to be “very demure” and “very mindful” in our everyday lives. The phrase, coined by TikTok user Jools Lebron, has taken social media by storm and has been used to describe the way in which we should approach everyday scenarios and soon could be the subject of a legal battle.
From a phrase to an IP asset
The TikTok creator used the phrase to describe the clothing and makeup she wears, and how her followers should always approach things with a subtle sophistication. The original video has now amassed over 52 million views, with many high-profile celebrities, including Jennifer Lopez, Khloe Kardashian and RuPaul, hopping on the very demure bandwagon. Further, the official social media account for The White House for US President Biden, posted an image of the President with the caption “Cancelling the student debt of nearly 5 million Americans through various actions. Very mindful. Very demure.”
Why you should secure IP early
In an attempt to capitalise off of the success of the trend, individuals including Lebron, have sought to apply to register the phrase as a trade mark at the US Patent and Trademark Office (USPTO). Applicants have also attempted to register offshoots of the phrase, such as “VERY DEMURE. VERY CUTESY.” and “ALWAYS DEMURE AND VERY MINDFUL”. Unfortunately, Lebron was not the first to file an application and could now face a battle with others to secure the registration.
Lebron may now be required to acquire those applications filed before her own application or, where these parties are unwilling to give up their earlier applications, engage in lengthy legal disputes to remove them from the register. In a now-deleted TikTok video, Lebron was deeply upset as she had invested a considerable sum of money creating merchandise with the phrase applied, and received an outpouring of support from fans.
The situation highlights how individuals who wish to benefit from creating these viral moments, can have their plans dashed by the first-to-file principle adopted by many trade mark offices around the world.
Complexities in US trade mark law
That said, US trade mark law is particularly complex, and a unique feature of the US system is the need to demonstrate use in commerce of the trade mark before an application can be registered. This requires US-based applicants to show that their trade mark was either in use in commerce at the time of filing the application or that use has commenced during the time when the trade mark is being prosecuted. The issue for Lebron is that use does not have to be demonstrated until after the expiry of the period to oppose the application
Position in the United Kingdom and Europe
In contrast to the US where a trade mark that lacks distinctiveness can be registered on the Supplemental Register provided it is being used in commerce, trade mark applicants in the UK and EU cannot avail themselves of this secondary level of trade mark protection. The phrases “very demure” and “very mindful”, to this writer’s eyes, do not appear to meet the eligibility criteria for registration in the UK and EU and would likely be rejected for a lack of distinctiveness or, in other words, an ability to indicate the commercial source of goods to which they are applied. The phrases “very demure” and “very mindful” are merely promotional laudatory statements the function of which is to communicate a customer service statement rather than act as a badge of origin.
Very demure, very mindful learnings
It may well be the case that the time it will take to register the trade mark will outlast the trend itself. However, this race to register highlights the importance of filing a trade mark application as early as possible to avoid any uncertainty as to whether you can register and use your trade mark. For more information about how to trade mark your intellectual property in the UK or Europe, get in touch with our specialist team.
