Content Creator Jools Lebron, @joolieannie on TikTok, has gone viral in a series of posts using the tag line “Very Demure, Very Mindful”. Lebron’s account has over 2.1 million follows with one video approaching 50 million views. Celebrities and brands have taken notice as J-Lo and Kim Kardashian have posted about Lebron, and Lebron has partnered with Verizon, Synergy beverages, and Netflix on sponsored content.
It appears that an opportunistic trademark applicant has taken notice as well, as an individual named Jefferson A. Bates filed for the trademark VERY DEMURE .. VERY MINDFUL .. on August 20, 2024, well after Lebron had been using the phrase in connection with her entertainment services. Lebron posted a now-deleted video where she expressed her disappointment that she was not the first to file the trademark application for her popular catch phrase.
However, what Lebron (and possibly Bates) may not have known at the time, is that the United States is a “first to use” jurisdiction and not a “first to file” jurisdiction. What this means is that is that certain rights are vested in the first person to use the trademark, and not the first person to file the trademark. Historically, United States trademark law protected a prior user’s trademark in the specific geographic area in which the trademark was being used. This becomes more complicated with advancements in technology and the ability to easily sell goods and provide services online. Lebron is providing entertainment services using the trademark “Very Demure, Very Mindful”, and based on the view count and follower count on her channel, it’s easily presumed her reach is nationwide.
In a later, more optimistic video, Lebron stated she has a team handling her trademark issue. Her team will (or already has) likely sent cease and desist letters to Bates ordering Bates to expressly abandon the application which would allow for Lebron to file an application for the mark VERY DEMURE, VERY MINDFUL. Additionally, her team will likely file a notice of opposition through the Trademark Trial and Appeal Board (TTAB), which is a formal opposition asking the TTAB to refuse Bates’ application based on Lebron’s prior use. Lebron will have to show that the public associates the trademark with her, and that there would be a likelihood of confusion if Bates was also allowed to use the trademark. If her opposition is successful, Bates’ application will be refused.
It may be a lengthy and costly process for Lebron, but Lebron has valid arguments to be successful in an opposition based on the merits, and what appears to be clear bad faith on the part of Bates. However, to avoid this headache, and time and money that will be spent in order for Lebron to assert her rights as the rightful owner of the trademark, Lebron should have filed the trademark for this phrase either before or right after she started using it.
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