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).