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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...

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...

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...