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Upcoming Changes to Canadian Trademark Law

We love our Canadian neighbors! Significant changes to Canadian trademark law are taking effect on June 17, 2019, and here is what you should know: ►   As of that date, Canada will be a member of the Madrid Protocol, an international filing system in nearly 120 countries, which allows you to file applications through the World Intellectual Property Office filing system, at a lower cost and maintain marks through renewals at a lower cost. (Note: This filing system has disadvantages in certain circumstances.) ►  Canada is adopting the Nice Classification System, the same class system the majority of the world already uses. Meaning, when filing in Canada you will have to classify goods and services into the 45 different classes, as we presently do in the U.S. This will result in significant cost increases for Canadian filings as the Trademark Office will be imposing a “per class” filing cost. ►   Canada will no longer require proof of use prior to registration. This will apply to pending applications as well as new applications. Meaning, you will no longer have to submit a “Declaration of Use” to obtain a registration certificate. This allows for you to effectively reserve your brand name for 3 years from the date of registration, after which, a registration may be vulnerable for non-use. [Evidence of use in Canada will be necessary during the first 3 years if you enforce your rights from a trademark registration through litigation.] ►  The registration fee is being eliminated for new applications filed after June 17th. If your application is pending, there will still be a registration fee due after...

BREAKING NEWS: U.S. Trademark Office Issues Guidance on Applications for Hemp and CBD Products

In the wake of the 2018 Farm Bill, the United States Patent and Trademark Office (Trademark Office) issued an Examination Guide regarding the prosecution of applications covering hemp derived goods and services. The great news is that there is a pathway to federally registering brand names for hemp-based cannabinoid products, though there are some caveats and restrictions that we discuss below. Despite this significant advance, applications for hemp-derived cannabinoid products applied-for prior to the passage of the 2018 Farm Bill face some challenges. First, a recap of what remains the same: The Trademark Office reiterated that registrations will not issue for goods and services that are derived from “marijuana,” as defined under the Controlled Substances Act (CSA), because marijuana remains federally unlawful. This also includes “paraphernalia” that is primarily intended for use in manufacturing, distributing, or dispensing marijuana. Keep in mind that CBD may be derived from either marijuana (as defined under the CSA) or hemp (as defined by the 2018 Farm Bill). Under the 2018 Farm Bill, many hemp products are now federally lawful, so long as the products comes from any part of the Cannabis sativa L. plant, whether growing or not, with a delta-9 tetrahydrocannabinol concentration of not more than 0.3 percent on a dry weight basis. However, federal registration is not available for all hemp products: United Sates Department of Agriculture (USDA) Controls Domestic Production: While the 2018 Farm Bill made hemp goods potentially lawful if they are derived from “hemp” (i.e., contain less than 0.3% THC), to date, the USDA has not promulgated regulations, created its own hemp-production plan, or approved any state or...

Trademark Priority: First-in-time, first-in-right . . . but not always.

When two businesses offer the same or similar products or services under the same or confusingly similar mark, the first question is who has superior trademark rights. Superior rights go to the user with “priority,” a term of art in trademark law. In the U.S., with some exceptions, priority is generally determined by the first party to use a mark in commerce. But, determining who first used the mark in commerce is not necessarily straightforward, because it can relate specifically to the date of first use, but also the geographical extent of use, whether one business has filed an intent-to-use application (discussed below), or whether one business already owns a federal trademark registration. Below we discuss the some of factors that impact trademark priority through hypothetical scenarios. Scenario 1 – Common Law User v. Common Law User: July 4, 2018  ABC LLC starts selling balloons under the brand BLOOMERS throughout California. July 6, 2018  XYZ LLC starts selling balloons under the brand BLOOMERS throughout Illinois. Common law (unregistered) rights are granted to the first user of a particular mark in commerce; however, common law rights are limited to the specific geographic area in which the products are sold or services are offered. In this set of circumstances, beginning on July 4, 2018, ABC developed common law rights in California, and beginning on July 6, 2018, XYZ developed common law rights in Illinois. Both are senior users within their separate territories. Though ABC started using the mark first, its rights in California do not extend into Illinois, and XYZ’s rights do not extend into California. This means that ABC could...

2018 Farm Bill: Registering Trademarks & Distribution of Hemp Products

On December 20, 2018, President Trump signed the Agricultural Improvement Act of 2018 (“2018 Farm Bill”), which marked a monumental shift in federal policy towards cannabis. So, what changed? Significantly, the 2018 Farm Bill defines “hemp” as the Cannabis Sativa L. plant, any parts of the cannabis plant, and all derivatives therefrom, having a THC concentration of not more than 0.3% on a dry weight basis, and removes “hemp” from the CSA’s definition of marijuana. Meaning, hemp (and all that is derived from hemp) is no longer a controlled substance under the CSA. That is, all hemp with a THC content of less than 0.3% is lawful—whether sourced internationally or grown pursuant to the 2014 Farm Bill. Additionally, the 2018 Farm Bill expressly clarifies that commercialization and interstate transportation, as well as import and export, of hemp-derived products is federally lawful. However, the implementation date of certain aspects of the 2018 Farm Bill is unclear. While this is a huge win for the cannabis industry, the 2018 Farm Bill does not legalize all hemp-derived products everywhere in the U.S. What is still federally unlawful? Even if the CBD comes from hemp, the Federal Food Drug and Cosmetics Act (enforced by the FDA) prevents the sale of products containing CBD that are for ingestion, unless they have undergone the FDA’s drug approval process. The FDA’s limitation applies specifically to ingestible products, e.g., supplements, oral sprays, edibles, and tinctures. Meaning, CBD-infused topicals and vape products appear to be in the clear (at least, for now). Additionally, the FDA has and will continue to enforce against companies selling CBD products that claim...

Overview: Likelihood of Confusion

Likelihood of consumer confusion is the touchstone of trademark law and determining whether there is infringement, which is the unauthorized use of a mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source or sponsorship of the goods and/or services. Whether there is a likelihood of confusion is assessed by considering a number of factors, which vary jurisdiction by jurisdiction. Below we discuss the factors evaluated by the Ninth Circuit: Similarity of the Marks: Confusion may arise primarily as a result of the mental associations conjured by the appearance of two marks, considering the marks in terms of sight, sound, and commercial meaning. Sight – the visual impression created by the mark as a whole. Consumers generally have imperfect memories and changing one or two letters in a mark generally will not avoid a likelihood of confusion. Further, where the mark is comprised of multiple terms, the dominant feature, often the most distinctive term of the mark, is entitled to more weight. Sound – the similarities in pronunciation. This is particularly important where brands are often verbally discussed. We note that the correct pronunciation is not the issue, but whether purchasers pronounce the word in the same or a similar manner. Meaning – the closeness of the commonly understood meaning or dictionary definitions of the marks. Strength of Mark: All trademarks are not created equal; some marks are more distinctive than others. Marks can be strong or weak. Made-up (fanciful) marks like Exxon® and Kodak®, and arbitrary marks, such as Apple®, are the strongest. Arbitrary...