News:

This month, the USPTO issued a new examination guide titled “Examination of Marks for Cannabis and Cannabis-Related Goods and Services after Enactment of the 2018 Farm Bill.” In light of the passage of the 2018 farm bill, the USPTO will now consider registering trademarks for some hemp-based goods and services. According to the USPTO, marks can be registered as long as the product is not regulated by the U.S. Food and Drug Administration and doesn’t fall under the federal definition of marijuana. The guide breaks down which cannabis and cannabis-derived products will be eligible for protection based on their “lawful use.” The lawful use requirement, as explained by the USPTO, mandates that “use of a mark in commerce must be lawful use to be the basis for federal registration of the mark.” TMEP §907, citing to 37 C.F.R. §2.69 and §§1, 45 of the Lanham Act. In other words, if a product cannot be legally sold in interstate commerce then, according to the USPTO, the mark cannot be used legally in interstate commerce and, lacking trademark use, the trademark cannot be registered. The USPTO stated that for applications filed on or after December 20, 2018 that identify goods encompassing cannabis or CBD, the 2018 Farm Bill potentially removes the CSA as a ground for refusal of registration, but only if the goods are derived from “hemp.” Cannabis and CBD derived from marijuana (i.e., Cannabis sativa L. with more than 0.3% THC on a dry-weight basis) still violate federal law, and…

Posted in cannabis, hemp, trademarks | Tagged Hemp, Trademark, uspto | Comments Off

Narrowing the international class for your alcohol beverage brand, products, or services for which you seek trademark protection is a rather straightforward decision; it comes down to either international class 32 for beer or international class 33 for all other wine and spirits. But what about the description of goods and services? In order to define the scope of your trademark rights, the USPTO requires that you provide a description, or “identification” of the goods and services that the mark will be used on or in connection with. Trademark examiners are not only comparing the similarity of marks, but how the marks are used on the same or similar goods and services within the same or similar channels of trade. Thus, the description is important because the USPTO will use it to decide whether there is a conflict between two marks, or whether the specific goods or services descriptions are different enough to distinguish the two marks and their varying uses. In general, the USPTO has taken the position that all alcoholic beverages are related, and relatedness of products is a major factor in determining whether two trademarks conflict. However, a proper description of goods and services can sometimes differentiate two alcohol beverage marks registered in the same international class. Many trademark applicants wish to obtain registration for goods and services in the broadest sense possible, with the hopes of securing the most protection for their mark. This technique may prove successful for applicants with a completely novel or fanciful mark in an…

The Trademark Trial and Appeal Board (TTAB) has ruled that a Ternura brand of cigars is confusingly similar to Ternura tequila, dubbing the two types of product as “complementary” and linked in the minds of consumers, according to Law360. The board affirmed a decision to refuse registration of “Ternura” as a trademark for cigars, citing an existing registration for tequila held by a California company called Don Francisco Spirits LLC. The board reasoned that because alcohol and tobacco are commonly sold by the same entity and they are complementary products marketed together for simultaneous consumption with identical trademarks, the marks were confusingly similar. “Whiskey and cigars are closely related in distribution and use,” the Fifth Circuit wrote. “Hotels, restaurants and bars supply cigars as well as whiskey to their guests and customers. People frequently smoke cigars while drinking whiskey.” The boards ruling signals a broadening of the channels of trade and streams of commerce one must evaluate in determining the strength of a trademark.  The case is:  In re El Galan Inc., case number 86961428, in the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board.

Posted in alcohol beverage law, Lawsuits | Tagged cigars, Trademark, ttab | Comments Off