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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...

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...

3 Recalls, 1 Month – Be Prepared!

For anyone in the California cannabis business, July 1, 2018 marked the beginning of a new era of cannabis regulations. In addition to more stringent packaging and labeling requirements, cannabis flower and cannabis products must also now be tested for a second more expansive list of pesticides, as well as residual solvents and foreign materials. While all testing labs adhere to the same set of regulations, there are no standardized methodologies for how labs test for cannabinoid concentration, composition, and contaminants. The lack of standardization is leading to inconsistent testing results and clearly presenting major problems for cannabis producers, evidenced by 3 voluntary product recalls announced within less than 1 month. On July 25th, The Bloom Brand voluntarily recalled a batch of cannabis products that contained Myclobutanil, a fungicide commonly found in food production. The Bloom Brand has not yet explained how the contaminated products made it past laboratory testing and into over 100 retail stores across California. Two days later on July 27, Lowell Herb Co., a producer of cannabis pre-rolls, voluntarily recalled a batch of products from 74 California dispensaries. Interestingly, the recalled product batch was initially cleared for sale after being approved by two different testing labs. However, two weeks after the batch was initially approved, results from a third test reversed the decision for failing to pass the state’s testing standards. The contaminant in question was not identified. On August 19, Venice Cookie Company initiated a voluntary recall of its cannabis-infused beverages due to a change in the passing grade of its compliance testing. The product batch initially passed testing in June, but a month...