TikTok creator Jools Lebron recently went viral for curating the phrase “very demure, very mindful, very cutesy”. This week, Lebron posted a video revealing that she had not applied to register the phrase as a trade mark fast enough and someone else had applied to register “very demure, very mindful”. She later deleted this video. It appears that a man called Jefferson Bates has filed an application to register the phrase with the United States Patent and Trademark Office in Washington State, taking advantage of its success. If Bates was to market any products using the mark, he would only have protection in Washington State, not across the whole of the US.
The US adopts a first to use system as opposed to first to file, similar to the UK, whereby you can oppose the registration of someone else’s trade mark if you have already used the mark, whether it is registered or unregistered. Therefore, presumably Lebron will be taking steps to oppose the registration on the ground that it is her mark. In her most recent video on the subject, she stated that she has the situation handled and now has a team.
It will be important for Lebron to take swift action against Bates’ application if she wishes to monetise the phrase. If Bates’ mark is registered, he could take action against Lebron for infringement if she releases any products featuring the phrase in Washington State. Alternatively, Lebron may chose to apply for a federal trade mark, which would protect the phrase across the US and would likely cancel out Bates’ mark.
When applying for the mark, Bates signed a declaration stating that he will be using it in the future. However, he has not done so yet. It is clear that Lebron was the first to use the mark and should therefore be able to oppose Bates’ application and register the phrase herself.
Others have sided with Lebron, with one woman, the founder of Hive, Raluca Pop founder, applying for “very demure, very cutesy” in California. Pop stated that Bates had not applied to register the whole phrase, only the first part so she had applied for the second part to safeguard it, which she plans to assign to Lebron.
If you have any questions on the above, feel free to contact a member of the team at 0191 281 4000 or alternatively at legal@mcdanielslaw.com.
