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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.  ...

The Claim Game: FDA Monitoring & Challenging Health Claims for Cannabis Products

There is increasing recognition of the healing potential of cannabis. Even the FDA has approved two synthetic marijuana-based medicines for treatment of nausea in chemotherapy patients and to increase appetite in AIDS patients suffering extreme weight loss. However, since the FDA’s approval of new drugs relies on testing and clinical trials, the status of cannabis as a Schedule I controlled substance thwarts a progressive scientific environment that enables research into the plant’s effects on a myriad of diseases and symptoms, including cancer, multiple sclerosis, chronic pain, arthritis, gastro-intestinal disorders, movement disorders, HIV/AIDS, and conditions related to aging. Unable to obtain comprehensive scientific proof, patients seeking non-traditional, non-pharma treatment of diseases and symptoms rely largely on anecdotal and testimonial statements from others experiencing their same condition. Until the FDA formally recognizes cannabis’s healing properties, manufacturers of cannabis products must take great care in making health claims. Earlier in October 2017, the U.S. Food and Drug Administration (FDA) Commissioner suggested that the FDA may begin “cracking down” on health claims for marijuana products. The FDA recognizes that it bears a responsibility to start addressing this issue, citing as an a example arguably problematic unsubstantiated “claims that marijuana has antitumor effects in the setting of cancer.” But, the FDA is no stranger to cannabis products. In 2015 and 2016, it sent a slew of warning letters to companies making claims about the health benefits of cannabidiol (CBD), such as “strengthens immune system,” “Will alleviate all kinds of anxiety and inflammation problems,” and “CBD kills breast cancer.” In keeping with the FDA’s broad powers, beware that after sending a warning letter, the FDA...

Famous Trademarks & Cannabis Branding

By definition, trademark infringement is the unauthorized use of a mark on goods or services in a manner that is likely to cause confusion, deception, or mistake as to the source of the products. However, all trademarks are not created equal and stronger marks enjoy a broader scope of protection. In fact, trademark owners of U.S. registrations for strong marks may assert rights against confusingly similar and identical marks, for related and identical products. And, famous marks enjoy an even broader scope of protection and can be enforced against confusingly similar marks even as to unrelated products. In contrast, owners of weak marks are only able to enforce their rights against identical marks for identical goods and services. Simply put, famous trademarks are in a category of their own, because they are household names that are more likely to be associated with a specific brand and remembered in the consuming public’s mind. Examples of famous trademarks are GOOGLE, NIKE, GATORADE, STARBUCKS, HERSHEY’S, and K-MART. Determining “fame” is not always clear, and this principal does not extend to marks that are merely well-known or only has “niche fame,” i.e., fame in a particular sector of goods/services. Factors considered in ascertaining whether a particular mark is famous include the volume of sales, duration of use, advertising expenditures, and lack of third party use. Cannabis products are no strangers to playing on famous marks, e.g., Pot-Tarts, KeefKat, Twixed, Rasta Reeses, Candyland, Girl Scout Cookies, Bubblelicious, etc. But misappropriating a powerful, famous brand expecting that some of the luster could rub off has consequences. That is, famous brands are not just heavily promoted, they...
On borrowing a “devilishly close” famous name

On borrowing a “devilishly close” famous name

Among the “best ofs” for 2013 was Forbes’ list of The World’s Most Valuable Brands. Technology companies dominate, with Apple®, Microsoft®, IBM®, Google®, Intel®, and Samsung® holding 6 of the top 10 positions on the list. The others were Coca-Cola®, McDonald’s®, General Electric® and Louis Vuitton®. These are some examples of famous marks for brands that represent many years of high-value products and intensive marketing, advertising and promotion to attain such prominence. Some marketers may be tempted to use a name devilishly close to a famous brand, such as “Mocha Cola” for a chocolaty drink or “Goggle” for a dual-window online search. But there’s a name for this kind of marketing cleverness—riding on a powerful brand—expecting that some of the luster of that famous brand could rub off. Smart marketing pros tend to stay away from doing this type of twist on the familiar, knowing that a product recall and re-launch tends to interfere with a brand’s ultimate success.Famous brands are not just heavily promoted. Famous brands aggressively enforce their trademarks. They go after the too-close-for-comfort knockoffs, because failure to do so damages their brand, both in the eyes of the marketplace and, ultimately, in the courts. Legally, proving a mark is “famous” requires much more than showing a brand is well known. But once fame is established, a famous markis entitled to a broader scope of protection. For example, the mark THE OTHER WHITE MEAT, used by the National Pork Board, was enforced against the mark THE OTHER RED MEAT for salmon products. One defense against infringing on a mark is parody—the idea that one might “borrow” a...

New domain deadlines, updated

New top-level Internet domain names–more than a thousand more specific replacements for .com—are now being delegated to their new owners at a steady pace. For trademark holders registered with the ICANN Trademark Clearing House, “sunrise periods” of typically 60 days are set aside for priority registrations of MYBRAND secondary domain names, such as mybrand.technology.  Those marks not registered at the Trademark ClearingHouse can still get in on general trademark claims for the next 90 days, and still before the domains go on sale to the general public. New TLD Domains Sunrise Claims General TM Claims  Start                    End Start                End .شبكة  Arabic “network” 10/31/13 12/29/13 12/30/13 3/30/14 .singles, .holdings, .guru, .clothing, .ventures, .bike, .plumbing 11/26/13 1/25/14 1/27/14 4/29/14 .photography, .lighting, .camera, .equipment, .estate, .gallery, .graphics 12/3/13 2/1/14 2/3/14 5/6/14 .menu 12/9/13 2/7/14 2/10/14 5/16/14 .uno 12/9/13 2/7/14 3/19/14 6/17/14 .みんな (xn--q9jyb4c) – Japanese “everyone” 12/9/13 2/14/14 2/21/14 1/1/38 .land, .today, .technology, .kitchen, .directory, .contractors, .construction 12/10/13 2/8/14 2/10/14 5/16/14 .tattoo, .sexy 12/11/13 2/9/14 2/25/14 5/26/14 .tips, .voyage, .diamonds, .enterprises 12/17/13 2/15/14 2/17/14 5/20/14 .recipes, .photos, .careers, .shoes 12/24/13 2/22/14 2/24/14 5/27/14 .cab, .domains, .limo 12/31/13 3/1/14 3/3/14 6/3/14 .company 12/31/13 3/8/14 3/10/14 6/10/14 .computer, .systems, .management, .center, .academy 1/7/14 3/8/14 3/10/14 6/10/14 .training, .email, .solutions, .builders, .support 1/14/14 3/15/14 3/17/14 6/17/14 .onl 1/14/14 3/15/14 4/17/14 7/16/14 .buzz 1/15/14 3/18/14 4/15/14 7/14/14 .онлайн, сайт  Russian “online” and “site” 1/16/14 3/18/14 3/25/14 6/24/14 .kiwi 1/16/14 3/17/14 3/18/14 6/16/14 .ruhr 1/21/14 2/20/14 3/27/14 5/25/14 .glass, .camp, . education, .institute, .repair 1/21/14 3/22/14 3/24/14 6/24/14 .pics, .gift, .link., .guitars 1/27/14 3/28/14 4/15/14 7/14/14 .build 1/27/14 3/28/14 3/29/14 6/28/14 .florist, .house, .international, .coffee, .solar 1/28/14...