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Registering a “DBA” in California

Consider that when your company is conducting business under a name that is different from the entity name registered with the Secretary of State, this name is considered your “doing business as” name, or “DBA.” Because selecting a strong brand name takes time and effort, businesses may choose to form its formal business entity under one name, but ultimately choose a different name for its brand. DBA’s are also referred to as “fictitious business names,” but there is nothing fictitious about it. To the relevant target customer, the DBA is just as real as any other business name. And, just like other business names, DBAs must be registered with the county where the company’s principal place of business is located. A company planning to operate under a DBA is required to register its DBA within 40 days of commencing operations. Steps for Registering a DBA in California: (1) Determine whether the DBA is available by searching the applicable county clerk’s records However, before selecting a brand name that will be outwardly facing to customers and prospective customers, it is critical to first assess whether a proposed brand/DBA name is available from a legal trademark perspective, without a substantial risk of a challenge from someone else already using or claiming rights in the same or a similar name for the same or related products or services. As we discussed in connection with our blog post on the Importance of Trademark Clearance (https://evoke.law/importance-of-trademark-clearance/), the “financial costs of rebranding can be wide-ranging—pulling product from the market, disruption of the business, customer uncertainty, customer re-education, new marketing campaigns, revised product packaging, etc. Because...

Guest Blog: Opportunities in Canada: Intellectual Property Protections

By: Christopher N. Hunter, Partner, Norton Rose Fulbright  & Fahad Diwan, Articling Student, Norton Rose Fulbright The expected legalization of cannabis in Canada this summer presents unique opportunities for cannabis companies from Canada, the United States and abroad. Most importantly, cannabis companies can register trademarks in Canada that are expressly associated with cannabis. The Canadian Intellectual Property Office (CIPO), the authority responsible for regulating trademarks, permits applicants to apply for trademarks covering all types of cannabis goods or services. This differs from the U.S., where the United States Patent and Trademark Office bars applicants from expressly identifying or implying the applied-for goods or services that “touch the plant.” With new amendments to the Canadian Trademarks Act (the Act), businesses with a license to produce cannabis and cannabis-based products may apply for trademarks for a wide variety of cannabis products without first having sold the underlying products. The amendments remove the ‘use’ requirement from the trademark registration process (this amendment is expected to come into force in 2019), allowing Applicants to register a trademark without demonstrating that they have used it in association with their goods or services. Accordingly, cannabis businesses will be able to obtain trademark protection on a variety of products without first having to develop the product and test it in the marketplace. Irrespective of the proposed amendments, cannabis businesses presently do not need to wait for legalization to register and protect their trademark rights as Canada allows businesses to file applications based on proposed use. The amendments to the Act will also permit cannabis businesses to register a variety of non-traditional marks. Once the amendments are in...

Importance of Trademark Clearance

“Trademark clearance” is a process that identifies whether others are already using an identical or confusingly similar mark in connection with the same or related goods or services, and assesses the level of risk associated with use, registration, and enforcement of a mark. Comprehensive clearance is not as simple as searching for an identical mark on the United States Patent and Trademark (“USPTO”) database, registering the corresponding domain name, or registering the same business name with a Secretary of State. Moreover, in the burgeoning cannabis marketplace, marks registered at the state level can present a major red flag. Effective trademark clearance requires an understanding of how the principles of trademark law are applied. For example, it is important to appreciate that famous marks, such as APPLE, COCA-COLA, and STARBUCKS, enjoy a broader scope of protection, which means that famous mark owners can enforce their trademark rights against even unrelated products. A general misunderstanding about clearing marks is only considering registered marks; common law (unregistered) marks cannot be overlooked. While common law marks cannot be cited during the prosecution of an application at the USPTO, an owner of a common law mark can challenge ownership of a mark in an opposition or cancellation proceeding (or a lawsuit). Additionally, for many common law marks, it may not be readily apparent when the owner began using a potentially conflicting mark, and a problematic reference may require investigation to assess priority of ownership. Significantly, marks need not be identical to create a likelihood of confusion, as minor variations in marks may not be considered legally significant. Variations of a proposed mark, such as...

Brand Valuation

At its essence, a brand is what makes your company your company and includes the quality, functionality, pricing, and packaging, of your products and services, trademarks, logos, slogans, color schemes, as well as all associated communications, such as advertising, marketing, promotion, and your website. Properly cultivated, your brand is an intangible asset with tremendous value, based on established goodwill in the marketplace. In 2017, Forbes reported that the top 5 most valuable brands were Apple ($170 Billion); Google ($101.8 Billion); Microsoft ($87 Billion); Facebook ($73.5 Billion); and Coca Cola ($56.4 Billion). But how is brand value actually measured? There are three primary approaches to brand valuation: (1) Cost-Based Valuation: The brand is valued using the sum of individual costs or values of brand assets and liabilities. This method measures the accumulation of costs in building your brand since inception, e.g., expenditures for advertising, marketing and promotion, legal costs for brand licensing and trademark registration. The fundamental principal behind the cost approach is that a buyer would not pay more for an asset than it would cost them to build an equivalent. (2) Market Approach: This method assigns a value based on comparisons of transactions, such as brand license agreements or acquisitions, involving similar assets, for companies offering comparable products on the same scale. The Market Approach is appropriate when the asset is not necessarily unique and there are sufficient comparable transactions in the marketplace. However, given that most brands are unique in some way, the Market Approach is not widely used. (3) Income Approach: This method measures the value of a brand by referencing the present value of the...

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.  ...

California Emergency Cannabis Regulations

What’s New? The California Bureau of Cannabis Control (BCC) along with the Departments of Public Health and Food & Agriculture issued emergency regulations to fully implement the Medicinal and Adult-Use Cannabis Regulation and Safety Act (MAUCRSA) and provide guidance for California cannabis businesses heading into 2018. We have focused on the select regulations to generally determine how cannabis businesses will be affected as to: Packaging/Labeling Branding Advertising Product Recall Packaging/Labeling: Packaging and labeling requirements included in the regulations issued by the Department of Public Health require two types of labels for all cannabis products: primary panel and informational panel. Primary Panel The “primary panel” is defined as the part of a label that is most likely to be displayed, presented, shown, or reviewed by a customer at the point of retail sale. The primary panel requires multiple data points, for example: the type of cannabis/cannabis product, total milligrams of THC and/or CBD, and the universal symbol for cannabis: All text on the primary panel must be at least size 6pt font, but may require a larger font size so the primary panel is “in relation” to the size of the container.  Informational Panel The “informational panel” means any part of the label that is not the primary panel. The informational panel must present the requisite warning language as well as other required labeling information, including nutritional information for edibles. Information required by MAUCRSA or by the emergency regulations not specifically designated to the primary panel belongs in the informational panel. All text in the informational panel must be at least size 6pt font, but may require a larger font...