The Silver Lining of the GDPR for Ad-Tech Companies

The General Data Protection Regulation (GDPR) went into effect in May of 2018 and has caused internet businesses with European Union users to shift their data collection, storage and usage practices.  The spirit of the GDPR is to give individuals greater control of their data in a world in which practically all computer devices are connected and some estimate the internet of things to be a $9 billion industry by 2020.  The EU has recognized that it is important that users be able to control the valuable information they provide on the internet, especially in light of how often regular internet users input personal information.

Amongst the requirements of the GDRP is that data is collected in accordance with one of the following justifications: (1) with the consent of the user; (2) in performance of a contract with the user; (3) in order to comply with law; (4) for the purpose of health and safety; (5) to perform an official governmental function; or (6) based on the legitimate interests of an organization or third party.  For ad-tech companies who do not have a prior business relationship with the user, consent is the primary justification for processing personal information.  Another requirement of note is that websites, apps, and online platforms be able to provide users with their data upon their request, and also delete data upon request.

The GDPR particularly affects ad-tech businesses that base their marketing practices on third-party data used to target consumers.  The inability of websites to share data is causing them to rethink their customer service, communication, and business strategies. Online marketers are no longer able to chase users around the internet with a bombardment of the same advertisements.

There have been different approaches by ad-tech companies for shifting their behavior while remaining relevant and complaint.  One is a hands-off approach, where companies have stopped collecting and handling personally identifiable information for users located in the European Union, which obviously hurts a company’s bottom line. A second approach has been to rely on the GDPR’s exemption of collecting data for a “legitimate business purpose,” which includes requested marketing, fraud prevention, and sometimes market research.  A third approach is the passive approach of hoping that the EU only goes after big players in the tech industry, and will have to make concessions and changes to the GDPR before going after the smaller fish.

Companies can still collect cookie-less data like keywords and search data and be GDPR compliant, which highlights the importance of creating a trustworthy relationship with users.  This type of first-party data, or data that the consumers have directly provided through a company’s website, should be prioritized in marketing efforts.

The GDPR is persuading many businesses to provide the same rights to all users, including those outside the EU, because of the momentum towards similar data privacy regulations in other jurisdictions.  However, it is important to realize that the GDPR does not consist of static regulations.  Over the next months and years, there will be challenges and changes to the regulations, so it will be interesting to see how the EU changes the regulations and  publishes clarifications to vague and ambiguous portions of the law.

Overall, the GDPR requires businesses to move away from third party data collection and marketing campaigns based on this data, a practice that regularly annoys customers.  While this may seem like a hinderance on marketing efforts, the silver lining is that the regulations present an opportunity to create a unique value exchange with consumers that leads to more consumer trust, and better bottom line results.  Companies that send too many irrelevant marketing materials and create bad customer service interactions are more likely to be contacted by consumers with burdensome GDPR information requests, so it is important to create relationships with users that make them feel comfortable providing first-party data and consent to receiving marketing materials.

The post GDPR world means that ad-tech companies need to be more open and stop sales tactics that irritate consumers.  One positive effect of the GDPR is that companies are being forced to be more open, deliver more value, and enhance their relationship with consumers.  It should cause a constructive impetus for improvements across the tech industry, and companies that bear this in mind will do well to grow their bottom line.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

Amazon Brand Registry: Add Trademarks To The Cart

The retail industry has been revolutionized by online marketplaces.  Amazon leads the charge, with programs like Amazon Prime making it easier to purchase products online than going to a brick-and-mortar stores.  

The rise of Amazon has also caused an increase in counterfeiting, trademark infringement and the unauthorized resale of products on the platform.  Third parties are selling products using the good will of others, resulting in lost sales and licensing revenue to the true owner of the brand.  Previously, the only option for parties who believed their products may be victim to counterfeiting was to prove the infringement to Amazon, instead of the seller bearing the burden of proving that they are not violating the law.  There has also been a growing concern with fraudulent complaints by parties who are not the true owner of a brand.

In an effort to streamline the thousands of complaints filed each day, Amazon has launched the Amazon Brand Registry. The Amazon Brand Registry allows brand owners, manufacturers, distributors, and resellers to control its content and marketing materials, including its titles, product descriptions, and product photographs. Most importantly, successful registration with the Registry establishes a brand owner’s valid ownership of a trademark with Amazon and provides an expediated process for causing Amazon to remove unauthorized sale of products bearing its trademarks.  It also serves as a deterrent and a defense against fraudulent complaints.

The threshold requirement for joining the Amazon Brand Registry is trademark registration with the United States Patent and Trademark Office (USPTO).  Not only can the store name be registered as trademark with the USPTO, but so can the individual products that are being sold, along with any logos and tag lines that are used.  Copyrights registered with the U.S. Copyright Office can also be included, allowing copyright owners to efficiently cause the removal of infringing photographs, videos and other content.

If you sell your goods on Amazon, registering your trademarks with the USPTO and then with the Amazon Brand Registry is extremely important in the new retail landscape, and will provide great return on your investment.  The process can be complicated, but we’re here to help with the logistics of protecting your intellectual property on Amazon and beyond.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article

California Opens Trademark Registration for Cannabis Brands

The new year started on a positive note for cannabis brands with the legalization of recreational marijuana.  In conjunction, the state announced that it will now be accepting applications for trademarks associated with recreational cannabis. 

Secretary of State Alex Padilla launched an online portal called Cannabizfile to help entrepreneurs join the fast-growing cannabis industry. The portal provides step-by-step information on how to operate a cannabis enterprise in California, including how to protect brands through trademark registration.
 
Trademark law provides protection to the names, slogans, phrases and logos that distinguish one company’s goods and services.  Brand owners typically apply for the nation-wide protection through federal registration with the United States Patent and Trademark Office (USPTO).  However, registration with the USPTO is only allowed for goods and services that are lawfully used in commerce.  Cannabis brands have long been restricted from registration due to federal drug laws, as it remains a Schedule 1 narcotic under the federal Controlled Substances Act. 

Parallel to the federal registration system, California state trademark registration also requires a “lawful commercial use” of one’s product and services.  Now that recreational cannabis has been legalized, cannabis companies can reap the benefits of trademark registration at the state level.

State registration of the mark serves as a public notice of the brand’s use.  It also provides evidence of first use, which is the basis for deciding trademark conflicts, and allows for legal causes of action under the California Business and Professions Code. 

There are a few drawbacks to state trademark registration.  Unlike applications filed with the USPTO, state applications cannot be filed on an “intent to use” basis.  This means cannabis brands must be operating in compliance with state law in order to register.  Furthermore, state registration only provides protection for brands operating within the jurisdiction.  

As long as recreation marijuana remains illegal at the federal level, cannabis businesses are wise to register their trademarks at the state level.  Contact BLG Trademarks to help you with the process of protecting your cannabis brands in California, and obtain the right to stop competitors from cashing in on your goodwill.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

Battle of the Brands: Marijuana Companies Face Trademark Infringement Lawsuits For Borrowing Household Brand Names

By: Paul Hirsch

The arrival of legal recreational marijuana has generated a booming economy, brimming with a variety of branded marijuana plant strains and products. However, the complicated interplay between the marijuana industry and the U.S. Patent and Trademark Office presents some challenges for cannabis entrepreneurs.

Cannabis entrepreneurs who named their brands after famous companies like “Girl Scout Cookies” and “Gorilla Glue” to gain popularity in the small medical marijuana economy are now competing in the larger legal economy. Many of these marijuana brands have caught the attention of the trademark owners of these famous brands. This has set the stage for a number of trademark infringement battles between marijuana brands and household brands. 

Coined after its sticky buds, the marijuana strain “Gorilla Glue” is among the most popular strains in the U.S. GG Strains LLC capitalized on its success by charging dispensaries for the permission to sell “Gorilla Glue.” The legalization of recreational weed has allowed Gorilla Glue strain to meet many new consumers. After almost all social media mentions of #GorillaGlue involve marijuana, GG Strains’ caught the eye of long-established liquid adhesive company Gorilla Glue Co.

Gorilla Glue Co., has filed a federal trademark infringement lawsuit against GG Strains, claiming that the legal weed company is “unlawfully advertising and selling products under a confusingly similar name to Gorilla Glue’s trademark rights.”

Trademark infringement is the unauthorized use of a trademark on a competing or related goods. The success of a claim to stop the infringement depends on whether the defendant’s use causes a “likelihood of confusion” in the average consumer. To determine likelihood of confusion, the courts will weigh factors such as the similarity of the marks and evidence of actual consumer confusion.

The battle over the “Gorilla Glue” name has already commenced. Representatives for the Gorilla Glue Co. have stated that GG Strains not only took the name, and thus the marks are identical, but intentionally traded on Gorilla Glue’s high-quality adhesive’ stickiness. Meanwhile, GG Strains LLC argues that there is no likelihood of confusion between glue products and marijuana, and that there is plenty of room in the consumer market for both brands.

The Gorilla Glue lawsuit may have far greater implications for the burgeoning marijuana industry. Cannabis entrepreneurs have long borrowed from famous brands and pop culture to name their buds, drinks, and snacks. Well known marijuana strains such as Candyland, AC/DC, Sour Patch Kids, Gorilla Glue are purchased across the country. Now that legalization of recreational marijuana has allowed marijuana companies to compete in a larger economy, and this may require marijuana brands to become more original.  

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.  

US Supreme Court Decision Opens the Floodgate for Racially Offensive Trademarks

By: Paul Hirsch

Since the Lanham act was passed in 1946, the United States Patent and Trademark Office had rejected trademark applications that include racially offensive language and symbols, because they “disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute”. In June, the US Supreme Court ruled that racially offensive trademarks are now protected under the First Amendment.

The Supreme Court decision emerged from the case Matal v. Tam, where an Asian-American rock band attempted to trademark their band’s name as “The Slants”, language considered to be a racial slur. The band had their trademark dismissed by the USPTO  for being “disparaging” under Section 2(a) of the Lanham Act. In June, the Supreme Court unanimously agreed that Section 2(a) of the Lanham Act “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” This decision cleared the way for offensive language, such as “The Slants”, to be trademarked.

Since the Supreme Court’s ruling in Matal v. Tam, the USPTO has seen a large influx of applications to trademark racially offensive language and symbols.

For example, an African-American man named Curtis Bordenave filed a trademark application for the “N-word” the same day the Matal v. Tam decision was made. Bordenave filed to use the language in association with retail store services, namely the sale of general merchandise.His goal is keeping the “N-word” out of visible circulation because he can enforce his trademark rights against its use.

Another example is Steven Maynard, an attorney, who has filed a trademark for the swastika symbol. Maynard plans on commercializing the offensive symbol on clothing and then charging an abnormally high price for the clothing, which effectively minimizes the symbol’s visible circulation in commerce.

Federal trademark registration protects parties against the unapproved use of their trademarked brands. In these cases, that includes the use of, or profit from, privately owned racially offensive language and symbols such as the n-word and swastika. However, there are conditions to attaining and keeping a registered trademark.

Prior to registering the trademark, applicants must show that there is a relationship between the brand, the product that is branded, and the consumer connection to both. If a design or word is universal or generally used by others the US Patent and Trademark Office may dismiss the trademark registration. Thus, it will difficult for applicants like Maynard to trademark the swastika, a universally known symbol.

After a trademark is registered, the trademark must be continuously used or it will be considered to have been abandoned. A party may not register trademarks for racially offensive language and simply hide it away forever. Thus, trademark owners who intend to control the censorship of the racially offensive language in commerce must simultaneously enter the trademark into commerce at a continuous rate. This could prove difficult.    

Parties who intend to trademark racially offensive language to control the message will undoubtedly face difficulties along the way. Although the US Supreme Court’s decision in Matal v. Tam has opened the floodgate for racially offensive language to be trademarked, it is still unclear how these trademarks will be handled by the US Patent and Trademark Office. We may not have an answer anytime soon, as trademarks are normally not decided upon immediately, and may take years to approve or deny.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article

Honest Policing of Trademarks Pays Off, While Bad Faith Will Make You Pay

By:  Erica Paige Fang

Most of us have used, or at least have heard of, Dropbox, Inc., the file hosting service company that has seen great success in the last few years.  In 2009, Dropbox applied for federal trademark registration for the mark DROPBOX.  At that time, Thru, Inc. had been using the mark THRU DROPBOX to describe a feature in its software, and included the TM symbol next to the mark.  However, Thru, Inc. decided to hold off on challenging the applied for mark, a decision that may haunt the company for some time. 

In 2014, five years after filing for registration with the USPTO, Dropbox, Inc. was awarded rights to the trademark “DROPBOX” and filed a motion for declaratory judgment against Thru, Inc.  In response, Thru, Inc. countersued, claiming infringement on their mark.  Through the process of discovery, Dropbox uncovered internal emails between Thru, Inc. officials discussing strategically holding off opposing Dropbox’s use of the trademark until the company launched their Initial Public Offering.  Thru, Inc. company officials went so far as to refer to the THRU DROPBOX registration as their lottery ticket.   Ultimately, in November 2016, a California federal judge held Thru, Inc. cannot challenge the registered mark DROPBOX because Thru, Inc. intentionally delayed filing the infringement lawsuit against Dropbox, Inc. in and attempt to increase leverage and the value of its claims.  Further, Thru, Inc. was not able to adequately explain why they did not join other companies, such as Officeware, in asserting trademark rights before the USPTO in a timely manner.  Officeware is a company that opposed Dropbox’s registration of DROPBOX, and so Dropbox, Inc. acquired the trademark rights from Officeware. 

The story does not end there.  Due to the bad faith by Thru, Inc. in waiting to bring claims of infringement, and referring to the unenforced trademark as a lottery ticket, the Court has awarded over $2 million in legal fees to Dropbox, Inc.  The judge states multiple times throughout the order that the “slow walk” of trademark enforcement to coincide with Dropbox’s IPO was not a coincidence, and could not believe a file sync and share company remained unaware of Dropbox until as late as 2011 as Thru, Inc. tried to claim. 

What could have been done differently?   First, when Thru, Inc. decided to use the mark THRU DROPBOX, they should have registered with the USPTO to strengthen their rights and also put examiners and others on notice of the mark’s use in commerce.  Second, Thru, Inc. should have acted in good faith, and upon notice of a potential infringement, determined a legal strategy and act on that strategy.  Being proactive about trademark enforcement and protection can save you a pretty penny!

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

California State Trademark Registration For Cannabis Could Finally Be Here!

By:  Erica Paige Fang

The current California Model State Trademark Law provides for the registration of trademarks and service marks with the California Secretary of State and requires the classification of goods and services conform to the classifications adopted by the United States Patent and Trademark Office (USPTO).  This has created a roadblock for business owners in the cannabis industry because the USPTO will not register a mark where the goods and services are related to illegal drugs, and to date, cannabis is still classified as a Schedule 1 substance by the Drug Enforcement Agency and the Food and Drug Administration. 

Section 2(a) of the Lanham Act bars registration of trademarks that consist of or comprise immoral, deceptive, or scandalous matter.  15 U.S.C. § 1052(a).  The Examiners at the USPTO have rejected as scandalous and immoral several trademark applications related to illegal drugs, citing the adverse health effects of drug use and the classification as a Schedule 1 substance.  California has refused state registration for cannabis related trademarks and service marks on the same basis.  California Assembly Bill 64 looks to change this and allow a certificate of registration that is issued on or after January 1, 2018 for marks related to medical and nonmedical cannabis goods and services that are lawfully in commerce under state law in the State of California.  The Bill proposes to add Section 14235.5 to the California Business and Professions Code, listing the following classifications that may be used for marks related to medical and nonmedical cannabis goods and services:  (1) 500 for goods that are medical cannabis, medical cannabis products, nonmedical cannabis, or nonmedical cannabis products; (2) 501 for services related to medical cannabis, medical cannabis products, nonmedical cannabis, or nonmedical cannabis products. 

Up until this point cannabis businesses have been at a disadvantage because they cannot protect their brand.  This downfall has lead to trouble securing investors and growing the businesses.  The other recreational states, Washington and Oregon, have passed similar legislation to offer trademark protection to cannabis businesses in their respective states.  If AB-64 passes, cannabis businesses will want to have acceptable specimen of use ready and a way to date it back to the first use in commerce in order to make registration as smooth as possible. 

AB-64 also looks to restrict the advertising of medical and non-medical cannabis and cannabis products.  Proposition 64 that was passed in November 2016 included some advertising restrictions, prohibiting the placement of billboards advertising cannabis that are located on an interstate highway or state highway that crosses the boarder of any other state.  AB-64 would expand this restriction to prohibit advertising on all interstate and state highways.  So while AB-64 may allow the State to grant trademark protection, where companies use that mark to advertise will have to comply with the state’s restrictions. 

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

 

Brewing Likelihood of Confusion: A Look At Coexistence Agreements

By: Erica Paige Fang

When two trademark owners have developed rights to identical or similar marks, they might enter into a coexistence agreement in order to resolve a potential trademark dispute.  The agreement must clearly state in detail the rights of the respective parties and how confusion in the marketplace will be avoided.  Typically, the goods and services are unrelated, are sold in different geographic areas, or utilize different trade channels. 

A consent agreement is a type of coexistence agreement that may be entered into the record of a trademark prosecution in order to obtain registration.  The consent agreement usually limits the rights of the party seeking consent, but will not thoroughly address long-term coexistence.   A consent agreement is a declaration that there will be no confusion.  Courts will consider this evidence there is no likelihood of confusion because the parties entering into the agreement are those who would most greatly be affected by potential consumer confusion.  It is important to know a court can reject a coexistence agreement if it fails to provide sufficient detail regarding avoidance of confusion and if they believe consumer confusion is unavoidable.

In re Bay State Brewing Company, Inc. (TTAB 2016) the Board determined the consent agreement was not sufficient to avoid confusion and affirmed the 2(d) refusal on likelihood of confusion.  As discussed above, a consent agreement usually carries great weight in the likelihood of confusion analysis.  The consent agreement relates to the market interface between the parties, and is number 10 of the du Pont factors. Here, Bay State Brewing Company (“Applicant”) filed to register TIME TRAVELER BLONDE (BLONDE disclaimed) as a standard word mark for beer, but was refused based on prior registered standard word mark TIME TRAVELER for beer, ale and lager.   The consent agreement limited the applicant to the geographic area of New York State and the New England area, whereas there were no geographic limitations on the Registrant.  The board found the restriction on use only limiting one party effectively allows for simultaneous use by both parties in the same regions, here New York State and the New England area.   Ultimately, the Board determined the restrictions set forth in the parties’ consent agreement would not eliminate confusion in the marketplace.  Further, the Board held the mark TIME TRAVELER for beer, ale and lager is an arbitrary mark entitled to a broad scope of protection. 

In re Four Seasons Hotels, Ltd., 987 F2.d (Fed. Cir. 1993), the Federal Circuit found no likelihood of confusion between FOUR SEASONS BILTMORE and THE BILTMORE LOS ANGELES, stating the parties’ coexistence agreement passed the scrutiny because the marks were sufficiently different, the services were not identical and the marks had coexisted in the marketplace for years without confusion.  The Board evaluating Bay State Brewing Company distinguished from this case because the goods, beer, were the identical, and the marks were virtually identical minus the disclaimed and descriptive term for beer, BLONDE. 

Parties should weigh future conflicts when considering a coexistence agreement.  Some important considerations include:  1) term of the agreement; 2) rights to license or assign the mark; and 3) potential expansion, particularly into new geographic areas or into new goods and services.  Further, a party should consider whether their mark is arbitrary, or fanciful in relating to the goods or services, allowing for a broader scope of protection.   Allowing other coexistence could dilute the mark and weaken the strength of protection.  However, in the right circumstances, a clear coexistence agreement detailing how the parties will avoid likelihood of confusion in the marketplace can help avoid any brewing of confusion, as was the case for the parties in the Four Seasons Hotel.  

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

Sound and Scent: Putting Trademark Examiners Senses to the Test

By:  Erica Paige Fang

As consumers, we recognize certain sounds associated with products from television or radio advertisements.  Some of these sounds are so distinguishing it is all that is needed to draw the name of the brand to your tongue.  Many of us probably do not realize we are hearing a registered trademark each time we hear the AFLAC duck, NBC chimes, the Pillsbury Dough Boy, or the MGM Entertainment lion roar.   

The United States Patent and Trademark Office (USPTO) will register a sound, or even a scent, when the sound creates an exclusive association between the product or services and the source of the product or services.  However, if the sound resembles or imitates commonplace sounds or those which listeners have been exposed under different circumstances, the applicant will be required to prove the sound has come to be exclusively associated with the applicant for the products or services for which the applicant is seeking registration.  For a distinct or unique sound, such as American Family Life Insurance’s AFLAC “quack,” proving the exclusive association would not be necessary because it does not resemble a commonplace duck quack.  The USPTO accepts sound files to show examiners the sound the applicant is seeking protection for. 

Registering a scent proves to be more difficult because an applicant must show that the fragrance serves no practical or functional purpose other than to help identify the source of the products or services.  This rules out any perfume or air freshener brands.  The electronic retail company Verizon was successful in obtaining a registered trademark for a scent they pump into their retail stores, which distinguish their store from other electronic retailers in October 2014 (Reg. 4618936).  Another scent trademark registration was issued in June 2015 for bubblegum scented jelly sandals (Reg. 4745535).  In 1995, the company Manhattan Oil filed trademarks for scented engine lubricants and obtained registrations for 3 fragrances (Reg. 2568512, 2596156, 24636044), making them the oldest scent trademarks that are live today.  In order to obtain a scent trademark registration, an applicant must be able to show the examiner how the scent will identify the source of the goods to consumers.  For the bubblegum sandal company, applicant sent in a sample sandal.  For larger items, like an entire scented retail store, that could pose a challenge. 

As entrepreneurs and business owners continue to create ways to stand out amongst the competitors, it is likely we will see more creative brand associations, such as sound and scent, and potential for registration with the USPTO to protect brand strength. 

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

Patents, I Would Like You To Meet Cannabis

By: Erica Paige Fang    

As we enter 2017, twenty-eight states have legalized the sale and use of medicinal cannabis, and eight states, including California, have legalized the sale and consumption of recreational cannabis.  The cannabis industry is booming with innovation.  Typically in a booming industry, individuals and companies turn to the patent system to protect inventions and obtain a legal monopoly for the protection period.  However, there are several road bumps cannabis innovators seeking patent protection will encounter. 

The United States Patent and Trademark Office (USPTO) will grant patent protection for inventions that are novel and non-obvious.  There are three types of patents an inventor can obtain:  design, plant, and utility.  The length of protection for a design patent is 14 years, while plant and utility patents hold protection for 20 years.   The USPTO is a federal office and therefore may not grant protection to innovations involving cannabis because the subject matter violates the Controlled Substance Act.  Unlike federal trademark protection, the patent statutes do not facially prohibit the patenting of cannabis plants, and therefore, it is possible the USPTO could issue plant patents for cannabis strains.

Another hurdle cannabis innovators must overcome is the invention disclosure requirement.  The disclosure must be sufficient so that another person skilled in the art can replicate the invention.  To date, there are patent applications claiming patentable cannabis strains, however, it is unlikely the applications’ disclosures will be sufficient to issue a patent.   In the agricultural industry, the scientific data receives heightened scrutiny to ensure the disclosure is thorough and enabling.  The cannabis industry has not developed or utilized equipment to collect and quantify the scientific data required to be issued a patent and overcome the disclosure requirement.  As the industry matures and develops better technology, or as big agriculture moves into the industry utilizing the scientific instruments already in place, it is likely we will see an influx of cannabis patents.    

If a patent is issued for a cannabis strain, or other cannabis related technology, there is still great risk in enforcing such a patent, as it would attract the attention of federal law enforcement.  While the industry continues to make giant leaps forward, there is still significant risk involved and obstacles to overcome to obtain intellectual property protection.  If there is a federal rescheduling of cannabis, patent attorneys theorize patent infringement claims involving cannabis will come forward.  

Innovators in the cannabis industry should keep in mind that a public disclosure of an invention would void any potential patent protection in the future.  Sharing, selling or otherwise distributing any part of the unique strain will be considered a public disclosure, including seeds, clones, and flowers.  

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.