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Common Trademark Refusals

While there are many reasons why applications may be refused for registration by the United States Patent and Trademark Office (USPTO), below is a summary of the most common issues raised by the Office: Identification of Goods/Services The most common rejection arises from the language used to describe an applicant’s goods and services. The USPTO requires a certain level of specificity in the description, the “identification,” in order to avoid awarding overly broad trademark rights. This prerequisite creates a tension between the applicant’s objective, to obtain the broadest scope of protection, and the USPTO requirement that the description not be vague or indefinite. Identification objections are relatively simple to address, but it is key to remember that you can only narrow the scope of the identification after applying, and cannot add additional goods or services. Therefore, if there is better to initially ensure that the identification describes all your products in the application and address any necessary revisions later. Descriptiveness
 Another common rejection occurs when the USPTO considers the applied-for mark merely descriptive, meaning that the mark itself conveys a feature, characteristic, an ingredient, quality, function, purpose, or use of the relevant goods or services. This rejection takes into account the applied-for mark in relation to the identification (discussed above). The rationale behind this rejection is to prevent awarding exclusive rights in descriptive terms/phrases that others need to use to accurately describe their own products. Back in 2014, Evoke Law wrote about choosing a distinctive, non-descriptive mark (https://evoke.law/the-distinguished-mark-stronger-in-court/). Descriptive marks are appealing because such marks immediately convey to the customer what the product or service is, lessening the marketing...

Registering a “DBA” in California

Consider that when your company is conducting business under a name that is different from the entity name registered with the Secretary of State, this name is considered your “doing business as” name, or “DBA.” Because selecting a strong brand name takes time and effort, businesses may choose to form its formal business entity under one name, but ultimately choose a different name for its brand. DBA’s are also referred to as “fictitious business names,” but there is nothing fictitious about it. To the relevant target customer, the DBA is just as real as any other business name. And, just like other business names, DBAs must be registered with the county where the company’s principal place of business is located. A company planning to operate under a DBA is required to register its DBA within 40 days of commencing operations. Steps for Registering a DBA in California: (1) Determine whether the DBA is available by searching the applicable county clerk’s records However, before selecting a brand name that will be outwardly facing to customers and prospective customers, it is critical to first assess whether a proposed brand/DBA name is available from a legal trademark perspective, without a substantial risk of a challenge from someone else already using or claiming rights in the same or a similar name for the same or related products or services. As we discussed in connection with our blog post on the Importance of Trademark Clearance (https://evoke.law/importance-of-trademark-clearance/), the “financial costs of rebranding can be wide-ranging—pulling product from the market, disruption of the business, customer uncertainty, customer re-education, new marketing campaigns, revised product packaging, etc. Because...

Guest Blog: Opportunities in Canada: Intellectual Property Protections

By: Christopher N. Hunter, Partner, Norton Rose Fulbright  & Fahad Diwan, Articling Student, Norton Rose Fulbright The expected legalization of cannabis in Canada this summer presents unique opportunities for cannabis companies from Canada, the United States and abroad. Most importantly, cannabis companies can register trademarks in Canada that are expressly associated with cannabis. The Canadian Intellectual Property Office (CIPO), the authority responsible for regulating trademarks, permits applicants to apply for trademarks covering all types of cannabis goods or services. This differs from the U.S., where the United States Patent and Trademark Office bars applicants from expressly identifying or implying the applied-for goods or services that “touch the plant.” With new amendments to the Canadian Trademarks Act (the Act), businesses with a license to produce cannabis and cannabis-based products may apply for trademarks for a wide variety of cannabis products without first having sold the underlying products. The amendments remove the ‘use’ requirement from the trademark registration process (this amendment is expected to come into force in 2019), allowing Applicants to register a trademark without demonstrating that they have used it in association with their goods or services. Accordingly, cannabis businesses will be able to obtain trademark protection on a variety of products without first having to develop the product and test it in the marketplace. Irrespective of the proposed amendments, cannabis businesses presently do not need to wait for legalization to register and protect their trademark rights as Canada allows businesses to file applications based on proposed use. The amendments to the Act will also permit cannabis businesses to register a variety of non-traditional marks. Once the amendments are in...

Guest Blog: Insurance Challenges for Cannabis Businesses

As the cannabis industry grows and business challenges proliferate, there are a variety of legal issues that are increasingly of interest to cannabis operators. Evoke Law specializes in trademark protection and brand licensing for the cannabis industry, and also offers a wide range of consumer protection legal services, including packaging and labeling compliance, recall plans, and counseling to avoid making impermissible product health claims. We also leverage our extensive network of diverse legal specialists to offer our clients information and resources that will bring additional overall value. Our first Guest Blog is by Jason Horst, Esq., Principle at Horst Counsel, on the topic of insurance. Cannabis companies keep hearing that they need to “cover up.” However, California’s regulations only require those holding distributor licenses to carry general liability insurance, and those regulations do not require non-distributor licensees to carry any liability insurance at all.  Nevertheless, many California cannabis operators are finding themselves subject to other requirements that they carry liability insurance. For example, some local jurisdictions have begun establishing their own insurance requirements. In November 2017, Los Angeles rolled out an ordinance requiring that every permitted cannabis operator in the City carry products liability insurance. Complying with these cannabis insurance requirements is both trickier and more fraught than it might appear, so it is critical for operators to be diligent on multiple levels. When it comes to local cannabis insurance provisions, it is important to understand that these requirements tend to vary significantly from jurisdiction to jurisdiction. Los Angeles requires all operators to carry products liability insurance, while Long Beach requires public liability insurance. The City of Coalinga has gone so...

California Trademarks Division Accepting Applications for Cannabis Goods & Services

It was initially announced that licensed California cannabis companies may file service mark applications to register marks for licensed cannabis-related services beginning January 1, 2018. But, in an unexpected shift in position, this changed on January 12. As of January 12, 2018, the California Secretary of State’s Office now accepts trademark applications for cannabis products (in addition to service mark applications). A state registration has a valuable defensive effect as they are public and can be found by others conducting a nationwide search for state registrations. In order to obtain protection for cannabis goods and services, an applicant must (1) be offering the goods or services in California commerce; (2) classify the goods and services in accordance with the same classification system used by the USPTO (the Nice Classification System); (3) have been issued a temporary license or have a trademark license with a license holder; and, for goods; and (4) be fully compliant with MAUCRSA and the emergency regulations, including packaging and labeling requirements. Additionally, while manufacturing, cultivating, or distributing your own branded products is not a protectable service, distributing someone else’s branded products does not preclude you from also distributing your own branded products and manufacturing someone else’s branded products does not preclude you from also manufacturing your own branded products. Similarly, cultivating flower under your own brand and then selling the flower to a retailer who sells it to the consumer under a different brand name would constitute a protectable service. As priority is an issue in any trademark dispute, filing applications sooner rather than later is important for marks for cannabis goods and services that are currently provided to California patients and/or consumers.  ...