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BREXIT Update: EU Trademark Applications & Registrations

BREXIT was finally implemented on January 31, 2020. What does this mean for your European Union (“EU”) trademark applications or registrations? Issued EU Registrations Will Automatically “Spawn” Parallel UK Registrations Good news! For EU trademark registrations granted by December 31, 2020, a parallel UK registration will automatically “spawn,” carrying over all the original information from the EU registration as well as the relevant filing, seniority, and priority dates to the newly issued UK registration. While the transition process has not yet been fully ironed-out, significantly, there will be no fees imposed for the conversion. Significantly, the UK government has recently confirmed that use in the remaining 27 EU countries within the five years before December 31, 2020 exit date, which would have supported the validity of an EU registration, will also support the validity of the spawned UK registration — even if the mark has never been used in the UK. However, if use continues only in the EU, with no actual use commencing in the UK, the spawned UK registration will become vulnerable to non-use revocation in 5 years, by December 31, 2025, because the EU use will be considered too distant and will no longer be relevant with respect to the spawned UK registration. We note that the examination process for EU trademark applications is relatively expeditiously (in part because the EU Intellectual Property Office (“EUIPO”) does not issue refusals based on likelihood of confusion, e.g., “relative rights”) in as little as 5 months from the date of filing to the date of registration (that is, if there are no Office actions or oppositions filed). So, there...

Conceptual v. Commercial Trademark Strength

The “strength” of a trademark relates to how likely a mark is to be remembered and associated in the public’s mind with the mark owner. The stronger a trademark, the greater protection it is accorded by trademark law. Conceptual Strength Conceptual trademark strength refers to the level of inherent distinctiveness of a mark. A mark can be inherently distinctive. (Alternatively, a mark may acquire distinctiveness through extensive and continuous use in the market.) During examination of a new application, the United States Patent and Trademark Office assess the conceptual strength of an applied-for mark to determine whether the mark is registrable. Being limited to the four corners of the application, the Office cannot consider commercial strength, unless the evidence is being presented in connection with a claim of secondary meaning. There are 3 types of inherently distinctive marks, discussed below in order of descending conceptual strength: – Fanciful marks are not actual words, but made-up terms, like ACCENTURE for consulting, EXXON for energy products, STARBUCKS for coffee, PINTEREST for social networking, and LEAFLY for cannabis news source and directory. Fanciful marks are the strongest type of mark because the commercial meaning is solely derived from the use by the trademark owner. – Arbitrary marks are real words, but words that have no literal, or even a suggestive, meaning in connection with the product. Examples include LEAPFROG for educational games, APPLE for computer products, AXE for men’s toiletries, JACK IN THE BOX for fast food, DAWN for cleaning products, and VOLCANO for a vaporizer. – Suggestive marks allude to and only indirectly relate to the product. Examples of suggestive marks...

Principal vs. Supplemental Trademark Register

In our recent blog post, we discussed important characteristics of marks to be considered during the selection process. The selection of a distinctive mark is key to being able to successfully enforce rights in a brand name, and also has implications for registration. In the U.S., unlike most other countries, there are two Trademark Registries: the Principal and the Supplemental. The Principal Register is the primary trademark register maintained by the United States Patent and Trademark Office and is reserved for marks that are inherently distinctive, either fanciful, arbitrary, or suggestive, or for merely descriptive marks that have acquired distinctiveness through extensive continuous and exclusive use in the marketplace. If an applied-for mark is considered merely descriptive by the USPTO and use in commerce has commenced, an applicant has the option to register on the Supplemental Register. However, registration on the Supplemental Register is an admission that the mark is weak, and, thus, not entitled to a strong scope of protection. Having a mark registered on the Principal Register confers certain benefits, including: Use of the ® symbolAbility to bring a trademark infringement suit in federal court Nationwide constructive use and constructive notice, which cuts off rights of other users for similar marks. Meaning, all others are presumed to know about the ownership claim once the mark is registered.Prima facie evidence of the validity of the mark. While not all marks are created equal, registration indicates that a mark has at least a presumption of distinctiveness and exclusivity. Nationwide priority as of the date of application, rather than the registration date.Registrant’s exclusive right to use the mark in connection...

Hemp/Cannabis/CBD Trademarks: An Interview With Evoke Law’s Mary Shapiro and Nicole Syzdek

Originally posted by Corsearch Establishing Hemp/Cannabis/CBD brands starts with proper trademark research and clearance. As the cannabis industry continues to grow nationally, cannabis operators, whether manufacturers, cultivators, retailers, distributors, etc., have increasing ability to secure trademark protection. In order to avail themselves of such protection, businesses will need to ensure that their brand is: available, registrable, and enforceable. Further, the 2018 Farm Bill legalized the domestic cultivation of hemp, as well as production of hemp-derived CBD products (with some exceptions), which industry experts agree will lead to an explosion of new brands in the marketplace. Over the last two years, Corsearch has developed a new Cannabis Industry Search designed for the unique nuances and considerations in the cannabis industry. Corsearch Account Manager Alyssa Christensen recently asked industry experts Mary Shapiro and Nicole Syzdek at Evoke Law to discuss the current cannabis product marketplace and the importance of and challenges associated with proper clearance for marks.  Even though Cannabis and CBD marks are not allowed to be federally registered, can you discuss why you think it is important to clear your client’s possible trademark? Actually, you can register cannabis marks federally. While you cannot register marks for marijuana or marijuana-derived products (meaning, where the THC content is over 0.3%), you can register marks for ancillary services, such as; providing information about cannabis online, offering educational services, and providing advocacy services for legalizing cannabis. However, for hemp-derived cannabis and products (meaning, where the THC content is less than 0.3%), you can register marks for actual cannabis products, including; flower, concentrates, topicals, and more (but not ingestible products such as edibles, tinctures, sublinguals, and supplements, as these violate the Food, Drug, and...

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...