Trademark Titan Blog Podcasts: Trademarks, Trademark Law, Copyrights, Copyright Law, Patents, Branding Laws Roger Bora - Former U.S. TM Office Attorney and Global Trademark, Copyright and Brand Attorney

U.S. TM Registration for Cannabis, Marijuana, Hemp & CBD Marks and 

Other Intellectual Property Protections for Cannabis Businesses

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How to Protect Cannabis Trademarks.  With the recent exception of certain hemp-based products and services, the U.S. Patent and Trademark Office (USPTO) does not grant trademark registrations for marks for  marijuana/cannabis products and services that “touch” the plant because use of trademarks must be lawful under federal law for federal trademark registration eligibility.How to Protect Cannabis Trademarks

Brand owners may, however, secure federal trademark registration for marks for cannabis-related activities that are legal and arguably also preserve trademark rights for future geographic and product and service expansion under the same registered mark for “related” goods and services that are unlawful as of the trademark application filing date, but later become lawful, including Cannabidiol (CBD) infused foods and marijuana itself.

Marijuana vs. Hemp – What’s the Difference?



* Marijuana is currently listed as an illegal Schedule I drug under the Controlled Substances Act (CSA) due to its high potential for abuse attributable to the psychoactive effects of delta-9- tetrahydrocannabinol (THC). how to protect cannabis marks





* Hemp has historically been grown for its strong fibers used for industrial purposes, including for making fabrics and rope. There is a significant difference between marijuana and hemp with respect to THC concentration. While marijuana can reach THC levels of 30%, THC levels in hemp are typically 0.3% or less. Furthermore, CBD is derived primarily from the hemp plant. How to Protect Cannabis Trademarks



2018 Farm Bill Removes Hemp from the Definition of Marijuana

The 2018 Farm Bill changed certain federal laws and regulations concerning the production and marketing of “hemp.”  Those changes included removing hemp from the CSA’s definition of marijuana, which means that hemp and its derivatives, such as CBD, that contain 0.3% or less of THC on a dry-weight basis are no longer considered controlled substances.  That recent change allows brand owners to federally register trademarks for hemp-based products and services that meet the new guidelines. 

Food and Drug Administration (FDA) Still Regulates Certain Hemp-Derived Products

However, the 2018 Farm Bill explicitly preserved the FDA authority to regulate certain products containing cannabis or cannabis-derived compounds.  Because CBD is an active ingredient in the FDA-approved drug Epidiolex, FDA regulation does not allow the active ingredient CBD to be introduced lawfully into any foods or dietary substances absent FDA approval.  Thus, not all hemp-derived products that contain 0.3% or less of THC are lawful because some may still violate the federal Food, Drug and Cosmetic Act (FDCA), including human foods, animal foods and nutritional supplements containing hemp-derived CBD.  

USPTO Examination Guide 1-19 for examining cannabis marks states that:

“[r]egistration of marks for foods, beverages, dietary supplements, or pet treats containing CBD will still be refused as unlawful under the FDCA, even if derived from hemp, as such goods may not be introduced lawfully into interstate commerce.” How to Protect Cannabis Trademarks

FDA guidelines indicate that hemp seeds, hemp seed protein powder and hemp seed oil may be used in human foods, as long as they comply with other requirements, since those three ingredients have been generally recognized as being safe by the FDA.

For those companies that fail to comply with FDA requirements… beware that the FDA monitors and investigates the sale of products that violate FDA laws, including CBD products promoted for therapeutic uses and treating diseases. When the FDA detects such violations,

Trademark Doctrine of Foreign Equivalents –

Infringing Trademarks in Different Languages

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Trademark Doctrine of Foreign Equivalents.  This podcast summarizes the recent U.S. Trademark Trial and Appeal Board decision of In re Compass Automotive Inc., which featured the issue of the doctrine of foreign equivalents.

I. Background of In re Compass Automotive Inc.



* Compass Automotive Inc. (the “Applicant”) sought U.S. trademark registration for the word mark GUEPARDO (which has an English translation of “Cheetah”) and design mark for “vehicle wheels.”





* The Trademark Examining Attorney refused registration of Applicant’s marks under Section 2(d) of the Trademark Act on the ground that Applicant’s marks, when used in connection with vehicle wheels, are likely to cause consumer confusion with the registered word mark CHEETAH (in English) for:



tire bead seating equipment, namely, pneumatically powered tire changer machines for land vehicles; and

hand tools for tires, namely, tire irons, wheel pullers.



* After the Examining Attorney issued final refusals on the ground Applicant’s marks are confusing similar to the cited registered mark, meaning there is a likelihood of confusion as to the source of the parties’ respective goods, the Applicant appealed the Examiner’s decisions to the Trademark Trial and Appeal Board – a/k/a TTAB.



Likelihood of Confusion Considerations – Legal Overview

In any likelihood of confusion analysis, key considerations include the:



* similarities between the marks in terms of sight, sound, meaning and commercial impression;

* similarities between the goods and/or services: are they identical or related?;

* channels of trade in which the goods and/or services travel (i.e., B2C vs. B2B, same/different industries / class of buyers); and

* sophistication level of buyers.



“Confusingly Similar” Trademarks Means “Source” Confusion

Test / Standard:



* Likelihood of consumer confusion as to the source of the parties’ respective goods/services is the standard

* It is not confusion as to what the consumer is buying

* Rather, it is confusion as to the source of the goods/services



Inquiry:



* Would the average consumer

* reasonably believe that

* the parties’ respective goods/services

* are of the type that would

* originate with the same source?



Example: running shoes vs. running pants



* Source confusion is the crux of trademark law!



Listen to Podcast 5 for a full discussion on what constitutes “confusingly similar” marks



II. Goods and Channels of Trade Analysis 

General Principles to Consider



* The Applicant’s and Registrant’s goods need not be identical or directly competitive to support a finding of likelihood of confusion as to the source of the goods.





* “It is sufficient if the respective goods are related in some manner and/or that the conditions surrounding their marketing are such that they would be encountered by the same persons under circumstances that could, because of the similarity of the marks used in connection therewith, give rise to the mistaken belief that they emanate from or are associated with a single source.”



Examining Attorney’s Arguments Included



* The Examining Attorney argued that the goods are related because they are complementary goods.





* To support that argument, the Examining Attorney relied on evidence showing that pneumatically powered tire changer machines are used to remove tires from vehicle wheels and wheel pullers are used to remove vehicle wheels...

Copyright Creation and Ownership –

What You Need to Know

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Introduction – Copyright Creation and Ownership

Securing U.S. copyright registration for works that are integral to your business is a good business and intellectual property strategy – especially for works that give you or your business a competitive advantage. 



* Those works may include product manuals, teaching guides, jewelry, poetry, novels, artwork, photographs, movies, music, puppets and software.



Eligibility for Copyright Protection

To be eligible for copyright protection, however, a work must (1) be fixed in a tangible medium, (2) be original to the creator and (3) comprise protectable expression (i.e., something more than simply stating an idea or fact).



* Copyright law, therefore, protects your expression of a certain idea, concept and principle, but does not protect the underlying idea, concept or principle. In other words, your expression of your views or thoughts about an idea, concept or principle is what may be protected by copyrights.



The Bundle of Exclusive Rights Include the Right to:



* Distribute;

* Display;

* Copy;

* Perform; and

* Create derivative works (new works based upon an original work)



How are Copyrights Created?

Copyrights are created the moment a work is fixed in a tangible medium; a registration is not necessary. 

Alert: If the work was commissioned from a third-party vendor (i.e., individual artist or brand agency), the party claiming copyright ownership must ensure that title to the copyright was transferred from the creator of the work because under copyright law, the general rule is that the author (or creator) of the work is the owner of the copyright, unless the work is assigned or the work was commissioned as a “work made for hire.”



* If an employee created the work within the scope of employment, the employer is considered the “author” of the work and thus owns the copyright in the work.





* A “work made for hire” must meet certain written and statutory requirements; many works do not fall within the legal category of a “work made for hire.” Thus an assignment would be necessary for the transfer of title to the commissioning party.



Tip: Check your agreements with vendors to see if the works were assigned or were commissioned under agreement as a legally recognized “work made for hire.” 

Advantages of Copyright Registration

Although copyrights are created immediately upon the creation of a work fixed in a tangible medium, copyright registration still provides extremely valuable rights, some of which are:



* May entitle copyright owners to attorneys’ fees and statutory awards for third party infringements

* Provides leverage in settlement discussions for infringement

* Can add value to the company’s assets at the time of a business sale

* Provides immediate access to the courts



Company Assets, Business Transaction & Copyright Creation and Ownership

Securing copyright (as well as trademark and patent) registration is a prudent business strategy for building stronger IP rights and a more valuable business.  In some instances, failure to secure registration protection for key intellectual property assets can present serious concerns during a sale of a company or company’s business assets, and may affect purchase price, since buyers expect sellers to adequately protect their intellectual property and are not eager to buy uncertainty. 

Copyright ownership issues may include:



* Whether company has “good title” to all copyrightable materials / works

* The need for a “Catch All” provision in a business transaction agreement for “all copyright protected works”

* Co-authors — beware of co-authorship issues!

Trademark Registration Protection for Global Expansion – How to Protect Trademarks Globally

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How to Protect Trademarks Globally



How to Protect Trademarks Globally and Maximize Company Goodwill and Asset Valuations. 

This post summarizes how U.S. and global trademark rights are created and the importance of trademark registration for national and global brand expansion. 

I. Introduction

U.S. brand owners should register their trademarks with the U.S. Patent and Trademark Office (“USPTO”) to receive the full protection of U.S. trademark laws.  Otherwise, failure to do so may restrict future geographic expansion of branded products. 

Furthermore, companies conducting international business should also seek trademark registration in countries where they conduct business because the majority of countries do not recognize trademark rights absent a country trademark registration, except under rare circumstances.  Accordingly, even if companies have used their marks for many years globally without registration, the majority of countries will not recognize that use as creating any trademark rights. 

Those issues may limit a company’s ability to expand nationally and internationally.  Furthermore, those issues may present serious concerns during a sale of a company or company’s assets and may affect purchase price, since buyers expect sellers to adequately protect their intellectual property in countries within which they conduct business and are not eager to buy uncertainty. 

II. How are Trademark Rights Created and How to Protect Trademarks Globally?

There are two primary ways in which trademark rights are created globally and they are as follows: 

1. “First to file” principle: meaning whoever files a trademark application first, and secures trademark registration, is generally considered the trademark owner of the registered mark for the listed products in the majority of countries.

2. “First to use” principle: meaning whoever uses a mark first is typically considered the owner of the mark for the associated products (assuming there are no earlier-filed trademark applications).  However, trademark rights are created only in the geographic regions within which the mark is actually used – leaving open other geographic regions for other parties to create rights in the same or confusingly similar mark, which may block both parties from freely expanding their brands nationally. 

Accordingly, obtaining trademark registration in first to use countries is recommended for securing future geographic expansion rights, as well as for other valuable rights. 

Therefore, brand owners must understand that their U.S., or home country, trademark rights and registrations typically do not provide any trademark rights in other countries, since trademark rights are country specific.  

III. Global Trademark Registration and Strategy Considerations

Brand owners should prepare laser-focused filing strategies based upon core trademarks, core products and key countries and avoid the “reactive strategy.”  A “reactive strategy” is one that responds to “emergencies” at the detriment of protecting the core marks and products, while exhausting the annual budget.  Companies must also make difficult decisions regarding which of their trademarks and products to protect and where to protect them.  They should also review their filing strategies periodically and modify them, as necessary. 

Accordingly, trademarks should be prioritized based on “value,” which may include the following factors:  

First tier: includes house marks and major product names used in all markets 

Second tier: includes important product names used in all markets 

Third tier: includes important names used in certain regions, and sub-brands  

Fourth tier: includes slogans. 

U.S. Trademark Registration Process – 

How to Register Trademarks  

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How to Trademark a Name

Strategies and Steps for How to Register Trademarks

Use and Intent-to-Use Trademark Applications

1.  A U.S. trademark application is filed based either upon an intent-to-use filing basis (you intend to use the mark for the listed goods/services post filing) or based upon actual use of the mark in interstate commerce (you are using the mark in interstate commerce for the listed goods/services as of the application filing date).

2.  Although a foreign applicant may rely upon its foreign trademark registration for securing a U.S. trademark registration, this post will not cover that filing option.

3.  Minimum filing details for application acceptance are:

(A) The full name of the applicant / trademark owner

The party that controls the nature and quality of the goods/services must be listed as the trademark applicant or the application may be declared void and any resulting registration unenforceable

(B) A name and address for correspondence

(C) A clear drawing of the mark

The application may only list one mark and the mark must be depicted in a manner that corresponds with the actual use of the mark in trade.  For example, if the mark is filed as one word, AcmeMax, it may not be used as two words, Acme Max.  Furthermore, if a design logo is filed with a word mark, the positioning of the logo design appearing on products must match the mark as depicted in the application, i.e., logo and word positioning must match.

(D) A listing of the goods or services

The goods and services listed in an application must accurately reflect those goods and services offered in trade under the applied-for mark.  If the goods and services are not accurately listed in the application, they may not be amended post filing to expand the scope of those goods and services.  If the goods and services are not accurately listed in an application, a new trademark application filing may be required.

(E) The filing fee for at least one class of goods or services

Application Review 

1.  Firstly, once the application is filed, an Examining Attorney reviews the application for any procedural or substantive issues – and that review will typically take around three-four months post filing date.

2.  Secondly, if the Examining Attorney finds any issues with the trademark application, the Examining Attorney will either issue an Office action explaining the reasons for the refusal or contact the applicant directly by email or phone in an effort to resolve the issue(s).

3.  Next, if the Examining Attorney issues an Office action, the applicant must respond to the Office action within six months of the mailing date, or the application will be declared abandoned.

Post Application Approval Process                                                      

1.  If/once the application is accepted by the Examining Attorney, the mark will be published for third party opposition (a/k/a a formal objection).

2.  As a result, any party who believes that it may be damaged by registration of the mark has thirty (30) days from the publication date to file either a notice of opposition to registration or a request to extend the time to oppose the registration.

3.  If the mark is published based upon the actual use of the mark in U.S. commerce for all of the listed goods/services (or on a foreign registration), and no oppositions are filed, the USPTO should register the mark and issue a registration certificate.

4.  If the mark is published based upon the applicant’s bona fide intent to use the mark in commerce and if no oppositions are filed, the USPTO will issue a Notice of Allowance.

5.  The applicant then has six (6) months from the mailing date of the Notice of Allowance to either (1) s...

Trademark Searches & Trademark Clearance

&

“Confusingly Similar” Marks …“Oh My!”

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Should we conduct a trademark search

In this podcast, I discuss the importance of U.S. and global trademark searches and clearance before trademark launch and trademark search considerations.  I also discuss common misconceptions about trademark rights and what constitutes “confusingly similar” trademarks.

Why Do We Clear Marks?

The trademark clearance step involves making sure that the selected marks do not infringe third-party trademark rights and are distinctive, thus immediately protectable upon first use.

Below are five other reasons to clear marks before product launch:

1. Determines likelihood of product expansion under same trademark

2. Determines geographic regions in which selected trademark should not be used due to prior users of the same or confusingly similar marks

3. Determines whether selected trademarks are weak or strong

4. Determines whether selected marks have negative connotations in other languages and cultures

5. Determines whether corresponding domain name is available

Common Trademark Misconceptions  

Below is a list of common misconceptions about trademark rights:



* State-issued business names / trademark registrations = right to use

* Domain name ownership = right to use term in domain name as a trademark

* Made up coined mark = right to use the made up term as a trademark

* “I searched the USPTO trademark database and did not find my mark”

* “I searched the USPTO trademark database and my name is available because company “x” abandoned its trademark registration for the same mark”



“Confusingly Similar” Trademarks Means “Source” Confusion



* Test / Standard: Likelihood of consumer confusion as to the source of the parties’ respective goods/services

* It is not confusion as to what the consumer is buying

* Rather, it is confusion as to the source of the goods/services

* Example: The source of a pair of running shoes vs. running pants



“Confusingly Similar” Trademarks – Factors 



* Would the average consumer

* reasonably believe that

* the parties’ respective goods/services

* are of the type that would

* originate with the same source?





* Source confusion is the crux of trademark law



To read my full blog post on this topic, click here.

Music: Special thanks go out to Jelsonic and Jeremy Wray for the fabulous music contained in my podcasts titled “The Returning.”



* Music: “The Returning”  by Jeremy Wray – Copyright Jelsonic(jelsonic.com)

* The music is licensed under creative commons attribution license available on the Free Music Archive

* The music contained in this podcast is only a portion of the original; to hear the full version click here



Disclaimer: This podcast is not legal advice.  The information contained in this podcast is provided as general information and for educational purposes only, and topics may or may not be updated subsequent to their initial posting.  Full Disclaimer details appear at www.TrademarkTitan.com

Should we conduct a trademark search