Who Owns the Trademark VERY DEMURE, VERY MINDFUL?
Let’s be very demure and very mindful! Today I’m wading into another trademark kerfuffle, once again giving my unsolicited — and probably unwelcome — take on a popular trademark issue — Very demure, very mindful. I am not at all demure, and the only thing on my mind currently is who has the rights to the trademark VERY DEMURE, VERY MINDFUL for class 035 advertising services.
A Viral Video Generates Another Trademark Law Controversy
Earlier this month, a video went viral on TikTok using the phrase “very demure, very mindful.” The video in question was one of a woman describing how to ensure that womankind present ourselves appropriately at work, and refrain from using makeup to portray an image very different from the one that we presented at the job interview. Personally, I work for myself, so I groom myself to please myself only, but I realize this is a rare privilege in a world that polices womens’ appearance pretty harshly, and can be quick to judge just what sort of woman we are based solely on our appearance. But I digress. In the video, Jools repeatedly used the phrase, “very demure, very mindful” to emphasize the importance of conservative grooming at work. Leave the green eyeshadow and caterpillar lashes at home, ladies; it’s not appropriate for the office if you came to the interview looking like Marge Simpson.
The First To File A Trademark Application Has Better Rights Than Anyone But The First User
Once the video went viral, you already know what happened: A man (of course!) named Jefferson Bates filed a trademark application for the phrase VERY DEMURE..VERY MINDFUL.. for “Advertising, marketing and promotional services related to all industries for the purpose of facilitating networking and socializing opportunities for business purposes” in class 035. Cue the internet uproar and outrage over his cheeky filing based on his intent to use the mark sometime in the future for promotional and marketing services, despite his apparently being neither demure nor mindful. In an apparent attempt to avenge Jools, another woman, Kassandra Pop, also filed her own trademark application four days later for the phrase VERY DEMURE VERY CUTESY, also for advertising services.
So Who Owns The VERY DEMURE, VERY MINDFUL Trademark?
So who owns the trademark? I say that Jefferson Bates owns the trademark if he filed the trademark application before anyone else began use of the trademark in commerce. If Jools LeBron used the trademark in commerce, then she owns the trademark rights. I have a feeling that this will be hotly litigated because of the potential money at stake. This situation — like the HAWK TUAH trademark situation that I discussed last month — is one where the person who uttered the trademark should have been more mindful of her trademark rights, and quickly filed a trademark application to protect them. After all, it took over 2 weeks between the video going viral and Jefferson Bates filing the trademark application — that’s an eternity in trademark land, and it allowed him to get a foothold and lay claim to the trademark rights in a manner that he would not have been able to do with a timely trademark filing.
The Internet Is Full Of Trademark Mis-Information
And now the internet has exploded with misinformation once again about trademark law and who has a colorable claim to what. This article mis-states the law, claiming that trademark law recognizes trademark rights in the first to use a trademark rather than the first person to file the trademark application. This is not quite true. The law recognizes as the owner of a trademark either 1) the first person to use the trademark in commerce or 2) the first person to file an Intent to Use trademark application with the United States Patent and Trademark Office, if no person has already used the trademark in commerce.
What Is Considered “Use In Commerce” For A Trademark?
Is uttering a phrase using a mark “in commerce?” Sometimes, but not in this situation. The video in question shows Jools LeBron discussing appropriate makeup for work, and uses the phrase “very demure, very mindful.” The video does not offer any goods or services, nor is it apparent that Jools LeBron, prior to this video going viral, had a business offering “influencer services,” that is, promoting the goods or services of others, as we’d say in trademark-speak. So if she doesn’t have a business promoting the goods and services of others at the time that she uttered the now-famous phrase, and she’s also not promoting any goods or services for other people in the video itself, how can it be said that she is “using” the trademark in commerce? It can’t, because she wasn’t.
This is merely another example that I’ve discussed before (I’m looking at you, Haley Welch) where someone says something notable or funny, and the rest of the internet shares it because it’s funny or noteworthy. (As an aside, I’ll say that I don’t at all understand the virality of the Jools LeBron video, because it’s really neither funny nor noteworthy, but my opinion doesn’t count on the internet…) For whatever reason, the video went viral, and so here we are, arguing about trademark rights on the internet. Here’s the law: Whoever first files an intent to use application OR uses the trademark in commerce has the trademark rights, and that’s a very settled tenet of trademark law. In this case, the controversy hinges around the “use,” and what is “use.”
So Now What Happens With The Trademark Filing?
In order to wrest the trademark rights away from Jefferson Bates, Jools LeBron must show that she used the VERY DEMURE, VERY MINDFUL trademark first, or that the trademark is somehow associated with her and was so associated even before Jefferson Bates filed his trademark application. Can she do that? I don’t know, but it’s important to note that this is a burden of proof that she wouldn’t have had she merely filed her trademark application in a timely manner.
A Timely Trademark Application Filing Is Essential
This is a perfect illustration of why a timely and accurate trademark filing is important. Filing early is important, and filing accurately is important if you want to obtain a trademark that covers the use of the mark on all of your goods and services. If the mark is important to you, then hire a trademark attorney who can review all of your options and craft a trademark strategy that gives you the broadest possible coverage for the least amount of money.
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