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International Trademark Protection

Trademark protection outside of the U.S. can be important for a number of reasons. You should at least consider filing for trademark protection internationally if your sales, distribution, and/ or manufacturing position is as follows: You conduct business in another country You plan conduct business in another country You manufacture, distribute, and/or advertise in another country A country of future interest is known for counterfeiting or intellectual property infringement Your products come into contact with nationals from another country, e.g., through tourism Owning trademark registrations outside of the U.S. may be the only means of enforcing trademark rights. Unlike the U.S., many countries recognize trademark rights based on the first-to-file, rather than the first-to-use. Additionally, most international countries do not require use of a mark prior to issuing a registration; meaning, you can effectively reserve your brand name for 3-5 years (depending on the country), when a registration could become vulnerable for non-use. Keep in mind, if you file international applications in most other countries within 6 months of the filing date of a U.S. application, your international applications may obtain the filing date of the U.S. application for priority. This is because the U.S. is party to the Paris Convention treaty, which allows applicants to obtain their U.S. filing date as the priority date in many foreign countries that are also parties to the Paris treaty. There are two main ways to apply to register a trademark and obtain international protection: (1) filing an application through the World Intellectual Property Office (WIPO), aka “Madrid system,” based on a prior-filed U.S. application/registration, or (2) filing a “national application” directly through a country’s trademark office. A third...

Trademark Watch Services

If you don’t want to conduct a search for your company on the Internet and suddenly discover a competitor operating under a similar name, proactive enforcement efforts can provide peace of mind that the value of your company’s trademarks is being preserved. Moreover, it is the duty of a mark owner to enforce exclusive rights in a mark, or jeopardize the enforceability of the mark in the future. Unchallenged third-party uses of a trademark weakens the strength of your company’s mark as a source identifier. A trademark watch service is an effective monitoring tool to efficiently identify potentially infringing adoption of confusingly similar marks. Evoke Law partners with Corsearch, a leading vendor of trademark clearance and protection services, to offer a wide range of watch services that fits a wide-variety of business needs. Below are descriptions of the most commonly utilized watch services: Domain Name Watch: A Domain Name Watch monitors registrations of standard top-level domain names (e.g., .com, .net, .org, .info) that include the exact mark, as well as other similar variations to catch potential typo-squatters. For example, if someone tried to register www.evokelegal.com, the watch service would alert us to this activity. Purchasing a domain is typically one of the first actions a business takes when it decides to proceed with a chosen brand name, and this watch provides somewhat of an “early warning system.” Expanded gTLD Watch: An Expanded gTLD Watch has all the capabilities of the Domain Name Watch, but also monitors registrations of generic top level domains (gTLDs) and country code top level domains (ccTLDs) for potential infringement. Using the above example, the Expanded...

Branding a Cannabis Strain: Don’t Reinvent the Wheel

Originally published in the April/May 2018 edition of mg Magazine.  Before you name a strain, you need to know the strain name and the brand name are not the same. A brand name or trademark does not communicate “what” the product is, but rather “who” is providing it, meaning, a trademark doesn’t tell you about a product, but instead communicates the source or origin. When selecting a trademark, always aim to choose a term or phrase that is both distinctive and exclusive, staying away from names that are descriptive, deceptively misdescriptive, or confusingly similar to state or federally registered marks, an applied-for mark, and common-law (unregistered) marks that are used for related goods or services, as well as famous trademarks, which enjoy an even broader scope of protection. If you select a trademark that is also the name of a strain used in your products, the selected mark would be considered merely descriptive of the product and not protectable for such cannabis products. For example, if an edible product named “Blue Dream” incorporates the Blue Dream strain, the manufacturer would not be able to protect the product name because it is merely descriptive of a product feature. Alternatively, if your cannabis product shares a name with a strain but the product does not contain that strain, the selected mark may be found deceptively misdescriptive if consumers would assume (albeit incorrectly) your product contains the particular strain. Marks comprising strain names such as OG Kush, Hardcore OG, and Charlotte’s Web are examples of popular strains the United States Patent and Trademark Office has found potentially descriptive or deceptively misdescriptive. Unique...

Common Trademark Refusals

While there are many reasons why applications may be refused for registration by the United States Patent and Trademark Office (USPTO), below is a summary of the most common issues raised by the Office: Identification of Goods/Services The most common rejection arises from the language used to describe an applicant’s goods and services. The USPTO requires a certain level of specificity in the description, the “identification,” in order to avoid awarding overly broad trademark rights. This prerequisite creates a tension between the applicant’s objective, to obtain the broadest scope of protection, and the USPTO requirement that the description not be vague or indefinite. Identification objections are relatively simple to address, but it is key to remember that you can only narrow the scope of the identification after applying, and cannot add additional goods or services. Therefore, if there is better to initially ensure that the identification describes all your products in the application and address any necessary revisions later. Descriptiveness
 Another common rejection occurs when the USPTO considers the applied-for mark merely descriptive, meaning that the mark itself conveys a feature, characteristic, an ingredient, quality, function, purpose, or use of the relevant goods or services. This rejection takes into account the applied-for mark in relation to the identification (discussed above). The rationale behind this rejection is to prevent awarding exclusive rights in descriptive terms/phrases that others need to use to accurately describe their own products. Back in 2014, Evoke Law wrote about choosing a distinctive, non-descriptive mark (https://evoke.law/the-distinguished-mark-stronger-in-court/). Descriptive marks are appealing because such marks immediately convey to the customer what the product or service is, lessening the marketing...

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...