Wednesday, January 16, 2019

Is Lindsay Lohan Bringing Her Beach and Night Clubs to the United States? Recent Trademark Applications May Provide Hints.

Lindsay Lohan's new show on MTV, Lindsay Lohan's Beach Club, just aired its first episode last week. The show follows the dramatic staff of her Lohan Beach House beach club in Mykonos, Greece, which Lohan opened in May 2018. Back in October 2016, Lohan opened the "Lohan Nightclub" in Athens, Greece.

Does the actress now have plans to open a nightclub or beach club in the United States? Well, she recently filed a dozen federal trademark applications in the United States, several of which are for the logos of her beach/nightclubs and all of cover dance and nightclub services, along with a variety of other goods/services.

On January 11, Crossheart Productions, Inc. (Lohan's company) filed twelve trademark applications with the U.S. Patent and Trademark Office. The applications are for (1) the logo seen above, (2) the same logo without "LOHAN," and (3) the words LINDSAY LOHAN. The applications cover the following goods/services in four classes:
  • Dance club services; Discotheques; Entertainment services in the nature of an ongoing reality based television program; Entertainment services in the nature of continuing program series featuring live action, comedy and drama provided through cable television, broadcast television, internet, video on demand, and through other forms of transmission media; Entertainment services, namely, personal appearances by a n actress; Fan clubs; Night club services; Night clubs; Providing on-line entertainment information, namely, information about television programming (Class 41);
  • Bar services; CafĂ© services; Hotel and restaurant services; Hotel services; Hotel, restaurant and bar services; Resort hotel services; Restaurant and bar services; Restaurant services (Class 43);
  • Various clothing items, including beach cover-ups, beach footwear, camisoles, dresses, pareos, and sarongs (Class 25); and
  • Various cosmetic items, including body lotions, make-up, body scrubs, shower gels, shampoo, and perfumery (Class 3).
Lohan filed each version of the logo in each class and the words LINDSAY LOHAN in each class (hence the 12 total applications). The applications also included Lindsay Lohan's written consent to register her name as a trademark for these goods and services, which is required under Section 2(c) of the Trademark Act.

Does this mean Lohan is opening a night club or dance club in the United States? We can't tell from the applications alone, but we can make some inferences.

First, these applications were filed on an intent-to-use basis, which requires that the applicant have a "bona fide" intention of using these trademarks in conjunction with the listed goods/services in the near future. See TMEP 806.01(b). If Lohan had no intention of using these marks with some or all of the goods/services listed, any subsequent registration covering those goods/services is void with respect to those goods/services.

Second, Lohan must eventually start using these trademarks in conjunction with the listed goods/services before they can be registered and submit sufficient proof of such use to the USPTO. See TMEP 1103. In other words, if she wants a trademark registration that covers bar services, dance club services, or nightclubs, she must start operating a bar, dance club, or nightclub. Otherwise, she'll need to delete those goods/services from the application or let the application lapse.

Third, trademark rights are territorial, so Lohan can't rely on use of these trademarks with these goods/services in Greece to prove use in the United States (at least not under the current filing basis of the applications). And why file trademark applications for these goods/services in the United States unless you intend to provide them here? While they might offer her protection in the United States, they won't do much for her in Greece (she likely has similar trademark registrations in Greece).

In sum, while Lohan fans wanting a club in the United States shouldn't get overly excited, it does appear something is in the works. Pay attention to these trademark applications to find out.

Monday, January 14, 2019

POPSUGAR Inc. Files Application to Register Its Popular #TWINNING Hashtag as a Trademark

POPSUGAR's #Twinning celebrity lookalike tool took off in popularity a couple weeks ago. The tool allows you to upload a selfie, then uses an algorithm to match you with your celebrity "twin." Social media users have been posting the matches to their friends and followers under the hashtag #Twinning (which is also the name of the tool).
The hashtag is now the subject of a federal trademark application, which POPSUGAR Inc. filed on January 9th. The #TWINNING application covers the following services in Class 42:
providing temporary use of on-line, non-downloadable software to match the photograph of the user with similar photographs or images of celebrities, public figures or pop culture characters, for entertainment purposes
According to the application, POPSUGAR first started using #TWINNING as a trademark in conjunction with these services in February 2018. The screenshot above is the specimen POPSUGAR submitted with the application to prove it is using the hashtag as a mark. See TMEP 1301.04.

Don't let this application fool you into thinking any hashtag can be registered as a trademark. They can't, because "the hash symbol and the wording HASHTAG do not provide any source-indicating function because they merely facilitate categorization and searching within online social media..." TMEP 1202.18. However, hashtags can be registered as trademarks if they function as an identifier of the source of the applicant's goods or services. Id. If POPSUGAR only used #Twinning as a hashtag on social media, it would not be able to register the term as a trademark. But because the hashtag is also the name of the software tool, POPSUGAR has a better chance of getting it registered. See TMEP 1202.18(b).

A quick search of the U.S. Patent and Trademark Office's database reveals POPSUGAR currently owns 59 active trademark applications or registrations (though this is the first one for #TWINNING).

On another note, did you submit your selfie to the #Twinning tool? Before you do, you might want to read POPSUGAR's terms. As noted by The Fashion Blog, by uploading your image to the #Twinning tool, you are granting POPSUGAR a very broad license to use your image for nearly any purpose (though such broad licenses aren't uncommon in the social media space).

Thursday, December 27, 2018

A CADDYSHACK Alcohol? Maybe, According to a Recent Trademark Application

Fans of the 1980 movie Caddyshack may get Caddyshack-themed alcohol in the near future, if a recent trademark application is any indication. On December 21, Warner Bros. Entertainment Inc. filed an application with the U.S. Patent and Trademark Office to register CADDYSHACK as a trademark for "alcoholic beverages except beer" in Class 33.
Warner Bros. filed the trademark application on an intent-to-use basis, suggesting it is not currently using CADDYSHACK as a trademark for alcoholic beverages except beer yet, but has a bona fide intention to do so in the near future. TMEP 806.01(b); 15 USC 1051(b). Warner Bros. will need to start using CADDYSHACK as a trademark for those beverages before this mark can register. TMEP 902. In other words, this application does not guarantee that Warner Bros. will release a Caddyshack alcohol, but it does (or is supposed to) mean something concrete is in the works.

According to my quick search, Warner Bros. owns five other trademark registrations for CADDYSHACK covering a variety of merchandise, but this is the first one for alcohol. Those looking for Caddyshack alcohol should keep their eyes peeled (although fans wanting a Caddyshack beer might be out of luck).

Wednesday, December 19, 2018

Miami Dolphins File Trademark Application for MIAMIRACLE Five Days After Walk-Off Victory Over Patriots

On December 9, 2018, with 7 seconds left in the fourth quarter, the Miami Dolphins took the ball 69 yards, lateraling it twice, to beat the New England Patriots 34-33. You can see a video of the play here. To Patriots fans, it was a nightmare. To Dolphins fans, it became the "Miami Miracle." And now the Miami Dolphins appear to be capitalizing on that phrase with a federal trademark application for MIAMIRACLE.
The Dolphins (or, more accurately, the Miami Dolphins, Ltd.) filed the trademark application with the U.S. Patent and Trademark Office on December 14. The application covers a wide variety of goods and services (mostly merchandise and novelty items) across 9 different classes, including the following:
  • Computer game software and disks and video game cartridges (Class 9);
  • Jewelry and watches (Class 14);
  • Magazines and books featuring football; pens; pencils; stickers; decals (Class 16);
  • All-purpose sport bags, athletic bags, and carrying bags (Class 18);
  • Wall fixtures, namely, three-dimensional wooden designs to be attached to the walls of rooms (Class 20);
  • Mugs; beverageware; glassware (Class 21);
  • A variety of apparel including T-shirts, sleepwear, athletic uniforms, and jerseys (Class 25);
  • Toys and sporting goods (Class 28); and
  • Entertainment services in the form of professional football games and exhibitions (Class 41).
The Dolphins filed this application on an intent-to-use basis, meaning the NFL team will need to actually start using MIAMIRACLE as a trademark in conjunction will all the goods and services listed in the application before the term can be registered as a trademark. TMEP 806.01(b); 15 USC 1051(b).

This isn't the first NFL team to file a federal trademark application for a "miracle." Last year, the Minnesota Vikings filed trademark applications for MINNESOTA MIRACLE and MINNEAPOLIS MIRACLE after their win against the Saints in last year's NFL playoffs. Most of those applications, which I blogged about here, are close to registration.

Tuesday, December 18, 2018

Barbour Files Application to Register Jacket Design as a Trademark

Think Barbour jackets have a distinctive look? Barbour does, and the clothing company is seeking to protect that look through a federal trademark registration.

On December 13, J. Barbour & Sons Ltd. filed a federal trademark application with the U.S. Patent and Trademark Office for the jacket configuration seen below.
Note that Barbour is not seeking to register the entire jacket design. The areas depicted by dotted lines are not part of the mark. Instead, Barbour describes the mark as follows:
The mark consists of a three-dimensional configuration of an outerwear design featuring a combination of the following elements: (a) four pockets placed and oriented as follows: two on each of the front left and right side beginning at the mid-breast of the jacket and extending to the waist of the jacket; two large pockets on each of the left and ride side of the jacket beginning at the waste [ed. - sic] and extending to just above the bottom of the jacket both with exterior flap closures and two eyelets on the underside of the front pockets; (b) a metal zipper pull configured in a ring shape with the top quarter of the ring being solid on a two-way opening zip; (c) a collar made of corduroy with detachable throat cover; and (d) a studded flap that closes over the entirety of the front zipper on the middle of the jacket. 
The application covers "Clothing and outwear, namely, coats and jackets" in Class 25 (not surprisingly). According to the application, Barbour has been using this design as a trademark since 1980.

As I've blogged about before, a product design trademark (often referred to as "trade dress") can be registered as a trademark if it is (1) non-functional and (2) inherently distinctive or has acquired distinctiveness in the marketplace. TMEP 1202.02TrafFix Devices, Inc. v. Mktg.Displays, Inc., 532 U.S. 23, 28-29 (2001).

Generally, to show this coat design is non-functional, Barbour will need to demonstrate that the features it seeks to register are not essential to the use or purpose of the article and do not affects the cost or quality of the article. TMEP 1202.02(a)Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995). For example, Alexander Wang (which I previously blogged about) is having difficulty showing that its configuration for several zippers on a handbag isn't functional, in part because (1) Alexander Wang's advertising stated that the separate zipper compartments are for "multi functionality" and (2) several other designs from third parties incorporated zippers in the same areas, indicating there is not a wide variety of alternative designs available to competitors.

If Barbour can demonstrate that its jacket trade dress is not functional, it must show that the design has acquired distinctiveness in the marketplace, because product designs are never inherently distinctive. Wal-Mart Stores, Inc. v Samara Bros., 529 U.S. 205, 215 (2000). Generally, that means Barbour will need to submit convincing evidence demonstrating to the USPTO that when consumers see the jacket design Barbour seeks to register, they recognize it as a Barbour jacket (not just any jacket).

So, is Barbour's pocket placement, zipper design, and zipper flap essential to the use or purpose of the jacket? Are there other alternative jacket designs available to competitors? Or would designing around this configuration be too costly? Do you recognize this configuration as a Barbour jacket?

Like Alexander Wang, Barbour may have a difficult time convincing the USPTO that this trade dress is registerable. We'll see what the USPTO thinks in approximately three to four months when this application is reviewed by an examining attorney.

Friday, December 7, 2018

Dallas Cowboys Rookie Leighton Vander Esch Files 30 Trademark Applications in Single Day

LVE Development, LLC, a business entity presumably associated with Dallas Cowboys rookie Leighton Vander Esch, had a busy day at the U.S. Patent and Trademark Office on December 3rd. On that day, Vander Esch's entity filed 30 trademark applications ($6,750 in filing fees, if anyone is counting).

Though LVE Development filed 30 different applications, the applications cover only five potential trademarks:
Many of the filings appear to be related to Vander Esch's new online store, which he announced on Twitter two days after the filings.
How can 30 applications cover only five different trademarks? Because LVE Development filed each application in a single class of goods/services. For example, LVE Development filed one application for THE WOLF HUNTER in Class 28 for footballs and another application for THE WOLF HUNTER in Class 36 for a variety of charitable services. It's possible to list multiple classes in a single application, but an issue in one class can hold up the entire application, so it's often best to break up a multi-class filing into separate applications (the filing fees remain the same either way).

Other goods/services covered by these applications include:
  • Advertising services, namely, promoting the brands, goods and services of others (Class 35);
  • Beanies; Football uniforms; Gloves and a variety of other apparel items (Class 25);
  • Charitable services in the nature of providing fitness instruction in the field of football (Class 41); and
  • Backpacks; Athletic bags; Duffel bags; Gym bags; Sports bags; Weekend bags (Class 18).
And how do we know these trademark applications are actually associated with Leighton Vander Esch? Because Vander Esch gave his written consent to file each application and such consent was submitted to the USPTO. That written consent is required under Section 2(c) of the Trademark Act, which prohibits the registration of a mark consisting of the name of any living individual without that individual's written consent. That applies to pseudonyms, stage names, and nicknames as well (i.e. THE WOLF HUNTER). See TMEP 1206.01.

According to my quick search, these are the first and only federal trademark applications filed by LVE Development, LLC.