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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...

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...