Trying to use someone else’s intellectual property? Not very demure, not very mindful…

Have you seen the latest TikTok trend? Jools LeBron, who has amassed over 2.2 million followers on the clock app created a short video, showing off her make-up for work, which she described as “very demure,” “very mindful” and “very cutesy.” Little did she know that this video would garner over 50 million views almost overnight with thousands of people jumping on the bandwagon, sharing their own videos to LeBron’s voice. This includes many well-known celebrities, from Jennifer Lopez to RuPaul, with LeBron now hailed as the creator of the viral trend.

But what does this have to do with intellectual property and trade marks? Well, an unknown Jefferson Bates quickly filed for the trade mark “Very Demure … Very Mindful …”, in the US at the US Patent and Trade Mark Office (USPTO), trying to protect the term for “advertising, marketing, and promotional services … in all industries”, beating Jools to it and trying to benefit from her fame and the latest craze.

Many publications are now saying that all is lost for LeBron, that she’s been somewhat naïve and missed out on the ability to profit from this new sensation – but this couldn’t be further from the truth. All Bates has done so far is apply for a trade mark registration. An application is not a registration and it does not guarantee you any rights – not until you have a shiny registration certificate in your hand.

The US system is different to the one in the UK and is very much based on use. Before a mark can be registered, it needs to be used in commerce in the US. When filing, an applicant needs to declare their existing use or intent to use a mark, as well as their good faith. An application cannot proceed until this use is proven to the USPTO. The registration process in the US is also much slower than the UK, so it will be months before Bates’ application is picked up and examined. It does not appear that Mr Bates has yet used this mark in the US, so this application is going nowhere fast.

As this is only a pending application, there are still many stages to get through before anyone has a registered trade mark, including an opposition period. During this period, anyone can challenge an application if it is too similar to their own idea, and if there is a likelihood of confusion for consumers as to its origin.

So, all is not yet lost for LeBron – she can submit arguments against the application showing the mark is not used and argue that Bates should not have this mark. She can show that she was the first to use it, and it is identical to what she has been using. Despite Bates quick action, many US attorneys and lawyers have also shared their confidence in LeBron successfully challenging Bates’ application and advised her to file her own application as soon as possible to secure her own rights.

This highlights the importance of applying for registration as soon as possible and shows why the trade marking systems around the world have and need an opposition period. Unfortunately, the onus is on you to keep an eye on trade mark registers, which means it can be tricky to keep track. At Pure Ideas, we offer trade mark watching services which allow you monitor trade mark registers across the globe, keeping you up to date with any applications that are similar to your own so that you can act quickly.

Want to protect your own unique idea or keep an eye on registered trade marks? Give us a call or make an enquiry and we can see whether applying for a trade mark is the right option for you.