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Brands vs. Company Names

Since there are different rules for trademarks and business names you must be aware of when you are referring to the brand versus the company/trade name. When using the name to refer to the company, the company name can and should be used as a proper noun, rather than as an adjective. You may also make the company name possessive. In contrast, when you are using your trademark, it should be used as an adjective, and not as a noun. Correct as a business name: Evoke Law is attending the upcoming MJBiz conference in Las Vegas. Correct as a trademark: Evoke Law® legal services focus on trademark and copyright protection. Incorrect as a trademark: Evoke Law® is located in the heart of San Francisco’s financial district. A trademark functions as a source-identifier of “who” provides the goods/services, not an identifier of “what” the goods/services is. In the correct use shown above, our mark is used correctly as a source identifier for legal services to identify who is providing the services. In the incorrect use above, the reference to “Evoke Law” is to the company, not the mark, and use of the ® symbol is incorrect. The ‘Brand Test’ for Determining Trademark Use One helpful method for determining whether the use requires a “TM,” “®,” or no symbol at all is to orally insert the word ‘brand’ between the suspected mark and the noun. For example, the Evoke Law® “brand” legal services is proper trademark use and the “®” designation is appropriate (because we own a federally registered trademark for legal services, along with a federal registration for the logo mark...

Guest Blog: The “Green Rush” to Register Cannabis Trademarks in Canada

Guest authors John H. Simpson & Shan Arora of Shift Law discuss the current landscape of cannabis trademark applications in Canada. On October 17, 2018, the sale of recreational cannabis became legal in Canada and the “green rush” to profit from the industry is on. For many months, industry players have been hurrying to stake claims to market share and to various forms of intellectual property rights in recreational cannabis products and services. However, when it comes to selecting and protecting cannabis-related brand names, in reality, the “green rush” has become a game of hurry up and wait. Currently, there are approximately 2200 trademark applications pending in the Canadian Intellectual Property Office (CIPO) with claims for cannabis or cannabis-related goods or services that have yet to be examined. This backlog of applications is partly responsible for the increasingly lengthy processing time for Canadian trademark applications. It is now taking more than 12 months for a first examiner’s report on a trademark application and the total time from filing to registration is now about 18-24 months. The vast majority of these applications were filed prior to legalization on the basis of “proposed use,” meaning the applicant has not yet used the mark with the applied-for goods or services as of the filing date. Filing proposed use applications is a wise strategy. During examination at the CanadianTrademark Office, as in the U.S., the first person to file an application has priority over subsequently filed confusingly similar proposed use trademarks. The examination considers all trademark applications for a likelihood of confusion with trademarks in prior-filed applications and registrations. At the outset, the...

CBD Roundup: Updates at the USPTO, Rescheduling, & More

Evoke Law Persuades USPTO to Register Trademark for CBD from Hemp Products Mid-2017, the U.S. Patent and Trademark Office (USPTO) started emphatically refusing trademark registration for marks covering products containing CBD from industrial hemp. Previously, it seemed that so long as the applicant confirmed that the CBD was derived from industrial hemp that was internationally sourced and contained no more than 0.3% THC, the USPTO would grant registration. But last year, the USPTO changed its stance and required that the source of the CBD be from only the parts of the plant excluded under the CSA’s definition of “marihuana,” namely the mature stalks and seeds, without commingling with other resinous parts of the cannabis plant. But here’s the catch – the USPTO took the position that there are no commercially appreciable amounts of CBD in mature hemp stalks, and therefore rejected the declaration from the applicant’s supplier of the hemp biomass expressly confirming that the source of the CBD was exclusively derived from the mature stalks without commingling of resin. With the support and assistance of technical advisor, Sanford Wolgel, Phd., and expert testimony from Jake Stout, Phd., Evoke Law provided the USPTO with irrefutable scientific evidence that the mature stalks do indeed produce CBD in appreciable quantities without the commingling from other plant parts, including any ‘resinous’ secretions. And the application is now moving forward to registration. DEA Reschedules (Some) CBD On September 21, 2018, the U.S. Drug Enforcement Agency (DEA) announced that it was rescheduling certain drugs containing cannabidiol (CBD) from Schedule 1 to Schedule 5. This action comes on the heels of the FDA approving the...

New Prop 65 Regulations Are Active!

As of August 30, 2018, California businesses must adhere to the new regulations relating to Prop 65 warnings. By way of background, The Safe Drinking Water and Toxic Enforcement Act of 1986 (a/k/a Prop 65) requires businesses to notify Californians about significant amounts of chemicals in the products they purchase, encounter in their homes or workplaces, or that are released into the environment. Businesses are required to provide a “clear and reasonable” warning before knowingly and intentionally exposing anyone to a listed chemical. Prop 65 allows for private enforcement actions if it is brought “in the public interest.” This indefinite standard has notoriously been exploited by persons seeking attorneys’ fees and settlements rather than improving public safety. In particular, the cannabis industry has experienced its fair share of Prop 65 enforcement actions. For example, in May 2017, a single person sent approximately 700 60-day warning notices to dispensaries, alleging Prop 65 violations due to the presence of Prop-65 listed fungicides and insecticides in edible products. Failing to provide Prop 65 notices can result in penalties as high as $2,500 per violation per day. Due to this enforcement risk, many dispensaries and delivery services are requiring that all products have a Prop 65 warning, regardless of the type of product or if the product does not, in fact, contain any of the Prop 65 chemicals. However, Prop 65 does not apply to all cannabis business or products, therefore, it is essential to understand when (and if) Prop 65 applies, and how to comply. Prop 65’s warning requirements do not apply to: Businesses with less than 10 employees Products that do not...

Guest Blog: Why You Need (or Should Update) Terms of Service & Privacy Policies

Guest author Alexandra Harmer of Ascenda Law Group discusses the importance of having terms of service and privacy policies for businesses operating in the digital world.  If you receive email, you have likely received many of the seemingly endless notices notifying you that [insert Vendor name here] has updated its website terms of service and privacy policy in the wake of the enactment of the General Data Protection Regulation (GDPR). You may even have had a good laugh at one of the many memes inspired by this phenomenon. But aside from perhaps having a good laugh and deleting more emails than normal, you might also be wondering if your website terms of service and/or privacy policy need an update, or if you need these documents at all. Facebook and Twitter have them, but does that mean every website needs them? Below are three reasons why you may need website terms of service and a privacy policy or should be updating the ones you currently have. Users Want Them At the heart of it, terms of service and privacy policies are contracts, which act as guides, explaining the relationship you have with another party. A contract tells each party what it can expect from the association, and, if well drafted, can even help resolve disputes without litigation. In the case of website terms of service and privacy policies, these documents tell the visitor what their rights are, and may include information about how to use the website, what the relevant policies are (like, return policies and, yes, privacy policies). Making your terms readily available means customers don’t have to spend time contacting...