Trademark Refusal Lessons: Not So Hot Girl Summer

What Megan Thee Stallion’s Case Teaches Online Business Owners About Trademarking

Hope you’re having a great summer! You’ve probably heard “Hot Girl Summer,” Megan Thee Stallion’s song that became a social media sensation in 2019. She trademarked Hot Girl Summer for music and live shows at the time, as part of her broader trademark filing strategy, and has since filed trademark applications for everything from posters to clothing. And recently… cosmetics and perfume.

In theory, Megan should have ownership of the phrase, right? And be able to keep anyone from using it? Unfortunately, no. A trademark allows you to keep anyone from using your name or phrase, or anything confusingly similar to that name or phrase, how you’re using it, or in a way that’s similar to how you’re using it. But someone trying to use the name for a different purpose in a completely different, unrelated industry? This is usually fair game. Think Delta, for example, or Peloton. There are registered trademarks for Delta in pretty much every class of goods. There are Peloton registered trademarks for exercise bikes (obviously), but also wealth consulting. Applying in every category of products or services of how you’re using a name/phrase as well as how you plan to use the phrase is very important. More on that in a sec.

Why Megan’s Trademark Application Was Rejected

Megan’s trademark application for cosmetics and perfume hit a major legal roadblock earlier this month when the USPTO issued a likelihood of confusion refusal for Hot Girl Summer, citing similarity to 3 existing registrations and 5 pending applications. The pending applications have priority over her application since they were filed before hers, so even if her legal team is able to overcome the likelihood of confusion rejection, her application is suspended until the 5 prior-filed applications are either registered or rejected. And anyone who has worked with me for trademarks knows just how long the Trademark Office’s registration process takes.

What Megan Could Have Done Differently

Overcoming a USPTO refusal based on likelihood of confusion is an uphill battle. Especially with a viral phrase like Hot Girl Summer, there are always going to be other businesses trying to capitalize on that virality, which means making products in the same name or similar in other industries (or even the same industry, and trying not to get caught for infringement). Here, Megan only has registered marks for music and live entertainment. She has pending applications that she’s extended 5 times for things like clothing and posters, but hasn’t submitted evidence of use in those categories in order to get the application to registration. If she had, that could be used as evidence of widespread use and public recognition/association of the phrase with her brand, which could bolster her argument against the likelihood of confusion rejection.

Also, I’ve seen registered marks for Hot Girl Summer by other businesses in the energy drinks category, and similar marks to hers in the beauty and cosmetics category (that are now preventing her from registering in that category). If she’d monitored trademark filings, she could have objected to the registration of these marks when she had the chance.

Why This Matters for Online Business Owners

Megan had a widely popular phrase that went viral. She had strong rights in both music and live events, and trademarked in both categories. But just because “Hot Girl Summer” went viral and she had rights in music and live entertainment, doesn’t mean she has blanket ownership of the phrase or anything similar to the phrase in other categories. You should always file trademark applications proactively across potential product and service categories.

How I Help Clients Protect Their Brands

How does this look in practice? I have multiple clients who come to me as soon as they have a name for a new offer, before they’ve even put together a sales page or launched the offer. I actually highly recommend this, as we can work together to ensure the name’s trademarkability, and tweak the name if necessary to increase the likelihood of registration success. We then file an intent-to-use trademark application, which essentially puts the name on hold and gives them priority, and then we amend and add evidence of their using the name after they’ve launched, protecting the name as much as possible before it’s exposed to the public.

Also, I have clients who have launched a brand/product/offer and haven’t yet trademarked the name, and also know they want to expand and create additional offers under that same name. I file 2 separate applications in this instance; I’ll file an application to cover how they’re currently using the name, and then a separate application for the ways in which they intend to use the name, covering all bases for comprehensive protection.

You can find out more about trademarking with me here. We recently added Klarna for extended payment plan options!

Questions on trademarks? Feel free to reach out. Also check out my Instagram (and please connect with me if we haven’t already) as I’m doing a video series on trademark do’s and don’ts and mishaps with popular brands. I addressed Tesla’s trademark refusal for Robotaxi last week.

Have a great week!