Last month, Congress approved the final 2018 version of Section 7607 of the Agricultural Act of 2014 (the “Farm Bill”), which received bipartisan support in the Senate. The Bill removes “hemp,” a variety of the Cannabis sativa plant species, from the Federal Controlled Substances Act (“CSA”) and legalizes hemp cultivation as an agricultural commodity similar to grain, meat, and dairy. Commentators expect the historic new Farm Bill to considerably encourage and promote innovation, development, production, and consumption of hemp in the United States. But to understand the significance of the 2018 version of the Farm Bill, it is important to take a step back and understand what industrial hemp is, what distinguishes it from marijuana, which remains a Schedule 1 prohibited substance, and what the future of hemp looks like in this Country.
Risk management is important for any business let alone a startup in a developing industry, but it takes on a whole new meaning for cannabis companies looking to make their mark on the burgeoning cannabis market. As more and more states go green and join the mounting number of sovereigns that permit, tax, and regulate medical and adult-use marijuana, the need for cannabis related banking, insurance, and real estate continues to grow.
As any cannabis entrepreneur and operator knows, the business is risky, capital intensive, and presents many unforeseen challenges. Proper and adequate insurance coverage and risk management is therefore paramount in such an uncertain, undulating industry.
In a precedential Trademark Trial and Appeal board (TTAB) decision, the Board held that an applied-for trademark consisting of multiple colors on product packaging, without any distinct shape, pattern or design, can never be inherently distinctive. See In re Forney Industries, Inc., Serial No. 86269096 (September 10, 2018). Applicant Forney Industries, Inc. sought to register a color scheme on the Principal Register, consisting of a black banner above a yellow to red color gradient for use on the product packaging of its various metal hardware and other small welding tools.
This is part 3 of a 3 part blog. Please click here to read Part 1 – Generic Marks. Please click here to read Part 2 – Merely Descriptive & Geographically Descriptive.
A mark can be refused registration if it bears a significant resemblance to a government insignia. In In re Shabby Chic Brands LLC, 122 USPQ2d 1139 (TTAB 2017), Shabby Chic Brands, LLC sought to register an image of “an ornate, feathered crown” for a variety of furniture and decorative housewares. The Trademark Examining Attorney refused registration based on Section 2(b) of the Lanham Act, which prohibits registration of marks that “consist of or comprise the flag or coat of arms or other insignia. . . of any foreign nation.” The Examining Attorney believed the proposed mark resembled the official emblem of the Prince of Wales, according to the illustration filed in accordance with the Paris Convention.
This is part 2 of a 3 part blog. Please click here to read Part 1 – Generic Marks. Please click here to read Part 3 – Government Insignia & Surname.
Trademarks are also non-registrable under the Lanham Act if the mark, when used in connection with applicant’s goods or services, is merely descriptive of them. 15 U.S.C. § 1052(e)(1). In a recent case, In re Houston Bites, LLC, Serial No. 87170141, applicant Houston Bites LLC attempted to register “Houston Bites” for services identified as “providing a website featuring non-downloadable photographs regarding restaurants, food and beverages.” The examining USPTO attorney refused registration on the ground that the mark was merely descriptive of the service in question: providing a website of photos related to light meals and snacks located in Houston, Texas. Houston was merely descriptive of applicant’s location, and a dictionary entry that defined “bites” as light meals or snacks bolstered the notion that the word bites was merely descriptive of what applicant’s services provided images of. If all individual components of the mark were descriptive, then the composite mark was also descriptive and not registrable. Continue Reading Hurdles to Federal Trademark Registration Part 2 – Merely Descriptive & Geographically Descriptive
Trademarks are product differentiators that help consumers recognize familiar brands that customers have come to associate with a certain perceived level of goodwill, reputation, quality, taste, consistency, and style. A form of shorthand, a unique signature of sorts, a trademark signals to consumers the source or origin of a particular good or service.
Walking into a McDonalds, we know how a cheeseburger is going to taste. Seeing a red and white striped curved awning with green domes that extend above the awning, we can expect to enjoy custard ice cream or Italian ice from Rita’s Italian Ice. Coffee served in a cup with a two tailed mermaid is, as we all know, from Starbucks.
This is part 1 of a 3 part blog. Please click here to read Part 2 – Merely Descriptive & Geographically Descriptive. Please click here to read Part 3 – Government Insignia & Surname.
Despite being used lawfully in commerce, a trade or service mark may be refused registration by the United States Patent and Trademark Office (“USPTO”) under Section 2 of the Trademark Act of 1946 (the “Lanham Act”) if the proposed mark is “generic,” “merely descriptive or deceptively misdescriptive,” or likely “to cause confusion” with another registered or used mark.
Courts recognize four trademark categories within which every mark must fall: (1) Generic marks, (2) Descriptive marks, (3) Suggestive marks, and (4) Arbitrary or Fanciful marks.[i] At the far end on the spectrum, warranting the greatest level of trademark protection, stands arbitrary or fanciful marks—those words which offer no inherent description of the product. On the opposite end of the spectrum lies generic marks—those made up of common descriptors to which courts afford no trademark protection.[ii]
In addition to intellectual property and banking law, bankruptcy law remains a complicated field for marijuana companies to access, let alone navigate. In the United States, The U.S. Trustee Program (“USTP”) is the component of the Department of Justice (“DOJ”) responsible for overseeing the administration of bankruptcy cases. The USTP appoints and supervises the 1,100 private trustees who handle every bankruptcy case across the country under federal bankruptcy laws.
In recent years, various government branches and departments across the country who are responsible for policing the government’s own trademarks have been sending cease-and-desist letters and filing suit against local businesses that are using trademarks likely to either cause confusion as to the government’s sponsorship of or affiliation with the companies or dilute the famous qualities of the government’s distinctive marks.