If You Forgot About In re Morgan, In re PharmaCann Is Here to Remind You

It seems every few months the Trademark Trial and Appeal Board (“TTAB”) revisits its precedential decisions, In re Morgan and In re JuJu Joints, which we summarized in previous posts.

Enter In re PharmaCann LLC, in which the TTAB again confirmed that to qualify for a federal registration, the use of a mark in commerce must be lawful and any goods or services the mark covers must not be illegal under federal law.

PharmaCann submitted federal trademark applications for PHARMACANN and PHARMACANNIS for “retail store services featuring medical marijuana,” and “dispensing of pharmaceuticals featuring medical marijuana,” both of which the Examining Attorney categorically refused as not in lawful use in commerce. The Examining Attorney also included in the record two articles discussing PharmaCann’s intention to operate a medical marijuana dispensary in Illinois, where PharmaCann is located and where dispensing medical marijuana is lawful.  

Fatal Assignment

A trademark assignment is a great option for a complete transfer of ownership rights in a trademark or service mark. An assignment can be useful when reorganizing an entity, acquiring someone’s else’s intellectual property, contributing your assets to a newly formed entity, or bringing all your intellectual property assets under one roof. However, trademark assignments must be valid to be effective. To ensure their validity, certain laws and steps must be followed, or serious consequences could occur.

Recently, an invalid trademark assignment resulted in the cancellation of a trademark registration. In Emerald Cities Collaborative, Inc. v. Sheri Jean Roese, the United States Court of Appeals for the Federal Circuit resolved a dispute hinging on whether Emerald Cities Collaborative, Inc. had a valid assignment from the prior owner for the mark THE EMERALD CITY. The previous owner was an individual unconnected to the company. Even though the assignment agreement indicated plainly that the assignment would become valid only after the mark registered, the Court affirmed the Trademark Trial and Appeal Board’s ruling that the assignment was improper and the mark should be canceled.

Yes... The USPTO Still Finds Cannabis Goods Federally Unlawful

Yes... The USPTO Still Finds Cannabis Goods Federally Unlawful

By: Nicole A. Syzdek

In an utterly unsurprising opinion issued on October 27, 2016, the Trademark Trial and Appeal Board of the United States Patent & Trademark Office, once again affirmed that marijuana paraphernalia is illegal under the Controlled Substances Act (CSA), and trademark registration will be refused if there is evidence showing the applicant did not possess a bona fide intent to lawfully use the mark in commerce.

In the present case, Applicant, JJ206, LLC d/b/a JuJu Joints, filed federal applications to register the marks POWERED BY JUJU and JUJU JOINTS for use in connection with “smokeless marijuana or cannabis vaporizer apparatus, namely, oral vaporizers for smokers; vaporizing marijuana or cannabis delivery device, namely, oral vaporizers for smoking purposes” in International Class 34.

Applicant explicitly identified the goods in its application as vaporizing devices for cannabis or marijuana, which makes it crystal clear that Applicant’s devices are designed and intended for use with federal illegal substances. Because the identified goods are illegal under the CSA, the Board determined that it was “a legal impossibility” for Applicant to possess the required bona fide intent to lawfully use the mark in commerce in connection with the applied for goods.

Selecting a Strong Trademark: Part I

The "Spectrum of Distinctiveness"

By: Nicole A. Syzdek, Associate, Brand & Branch LLP

Your brand is everything. A strong brand firmly establishes your presence in the marketplace, increases the value of your company, and makes acquiring (and keeping) customers easier. Creating a strong brand begins with selecting a memorable trademark that keeps your company in the forefront of consumers' minds, ensuring that when they're ready to buy, they'll think of you first. 

Selecting a Strong Trademark

Your trademark is an essential component of your brand. A trademark, or "mark," is any word, name, symbol, design, image, or even sound used in commerce to indicate the source of your goods or services and distinguish them from others'. Trademarks are extremely valuable assets and represent the hard-earned goodwill of your business. But not all trademarks are created equal. 

When generating brand ideas, many new companies initially select names that describe the goods or services they offer. They may assume that this helps customers quickly and easily understand what the company does, or is good for search engine optimization. Perhaps, but a good marketing team will steer its clients toward a strong and distinctive mark that helps distinguish their products in the marketplace, and away from a mark that merely describes what they do.

Not only do descriptive names make for weak brands, they are typically also not protectable as trademarks. The strength of a particular trademark is evaluated on a spectrum of distinctiveness ranging from the strongest fanciful marks to the weakest descriptive marks, which may not be protectable at all.

USPTO Issues Major Ruling on Cannabis Trademarks

In re Morgan Brown

Is the sky falling, or is there still hope?

On July 14, 2016, the Trademark Trial and Appeal Board of the United States Patent & Trademark Office (USPTO) issued a decision refusing to register the mark HERBAL ACCESS for use in connection with "retail store services featuring herbs" on the grounds the mark was being used with the sale of marijuana in violation of federal law. While this decision presents some new hurdles, it doesn’t change what cannabis businesses have been required to do all along—find creative, legal ways to secure trademark rights at the USPTO.