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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...

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...