South Florida Sun-Sentinel Palm Beach (Sunday)
SELFIE WARS
Museum of Selfies sues Miami’s Original Selfie Museum, claiming rival stole trademark
As if there weren’t enough places in South Florida to take selfies — not enough beaches, not enough gleaming high-rises, not enough colorful restaurants, nightclubs, yachts, mansions and luxury shopping promenades.
No, what South Florida apparently needed for young folks to fully capture for posterity their shimmering fabulousness was an entire studio, in trendy Wynwood, with artsy backgrounds, festive wardrobe choices, and fun props. It’s called “Original Selfie Museum” and it’s been open since July 2020.
It wasn’t the first selfie-centered attraction to open, and it hasn’t been the last. The market for selfie studios is apparently so voracious now that dozens of imitators have popped up in Miami and across the country. There are so many, in fact, that they’re fighting each other to establish who wields the biggest stick.
Museum of Selfies, a Los Angeles company, filed suit this week in U.S. District Court in Miami, accusing the Wynwood venue’s parent company, Denver, Colorado -based Selfie Museum LLC, of trademark infringement.
In an interview, Selfie Museum LLC co-founder Igor Benchak said that he and his partners opened their business, which has since expanded to seven locations, before learning that a business called Museum of Selfies opened in Los Angeles.
Benchak argues that there are now so many businesses using variations of the words Selfie Museum in their names that the phrase has become genericized. That’s what happens when businesses fail to protect their trademarks and they fall into everyday use. Examples of abandoned trademarks include Aspirin, Heroin, Escalator, Trampoline, Kerosine, Linoleum, Zipper and App Store.
In its lawsuit, Museum of Selfies argues that it first opened for business in Los Angeles — another city that must not have enough locations for Instagram-worthy selfies — in April 2018 “with the goal of providing fresh and must-see attractions, including interactive exhibits allowing people to capture ‘selfies’ of themselves with commissioned artwork.”
A story in the Las Vegas Review Journal states that Museum of Selfies opened a Las Vegas version in June 2021, with exhibits like the “Upside Down Room,” the “Emoji Pool” and the “Bathroom Selfie.”
Museum of Selfies filed an application to register its name with the United States Patent and Trademark Office in August 2017 and it was initially rejected “for being a common descriptive term used in the industry,” the company’s attorney, R. Joseph Trojan of the Los Angeles-based Trojan Law Firm, said by email.
“In response, we submitted overwhelming evidence that Museum of Selfies was and is associated exclusively with our client’s business in the minds of consumers before Mr. Benchak began his infringement,” Trojan said.
In August 2021, the company was informed that its application was approved “because it was not merely a descriptive or generic term used in the industry,” Trojan said, adding, “Rather, Museum of Selfies is a term associated exclusively with our client.”
On Jan. 12, Selfie Museum LLC filed a Notice of Opposition to Museum of Selfies’ trademark application, arguing that it “has not acquired distinctiveness and is instead merely descriptive of [“Museum of Selfies’] services.
Selfie Museum LLC argued that it had developed “common law trademark rights” to its name and established “highly valuable goodwill” that makes its name “closely and uniquely identified” with the company.
The Notice of Opposition is now pending before the office’s Trademark Trial and Appeal Board, but Trojan said his client has asked the board to delay consideration of the appeal until the infringement lawsuit is decided.
“Mr. Benchak cannot cite to his infringing use as evidence that the mark is commonly used,” Trojan said. “Mr. Benchak’s use is merely evidence of his widespread infringement.”
Interviewed by phone, Benchak said his company was inspired not by Museum of Selfies but by two businesses that became known informally as “selfie museums” — Museum of Ice Cream, founded in 2016 as a pop-up tourist attraction in New York and Color Factory, established in San Francisco in August 2017.
Only about six or seven “selfie” venues existed when he and his partners started in 2019, he said. “After we opened, all of a sudden there was a surge,” he said.
In fact, a Google search for the term “selfie museum” turns up hundreds of examples of the term applied to a long list of venues throughout the country.
Benchak said he has no plans to stop using the name Selfie Museum to market his attractions, which are also in Denver, Colorado; Raleigh, North Carolina; Alpharetta, Georgia; San Antonio and Austin, Texas; Atlanta, Georgia; and Naples, on Florida’s southwestern coast.
“It’s become a generic term,” he said. “There are 200 to 300 places that call themselves Selfie Museums.”
He disputes the notion that only the young and sparkly are drawn to his businesses. “Our core audience is 25 to 35,” he said. “We get families, kids, millennials. Older people, too. It’s just fun to take pictures.”
The rest of us, meanwhile, know where we can find actual selfie museums if so inclined. Just fire up social media.
Ron Hurtibise covers business and consumer issues for the South Florida Sun Sentinel. He can be reached by phone at 954-356-4071, on Twitter @ronhurtibise or by email at rhurtibise@ sunsentinel.com.