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International Trademark Registrations and The Madrid Protocol

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By: Vivek Vaidya While federal trademark registration with the United States Patent and Trademark Office provides protection for business activities in the United States, companies that offer products and services internationally should look to register in each of the countries they perform commerce.  Filing applications in multiple countries would be extremely tedious, but luckily an… Read More

By: Vivek Vaidya

While federal trademark registration with the United States Patent and Trademark Office provides protection for business activities in the United States, companies that offer products and services internationally should look to register in each of the countries they perform commerce.  Filing applications in multiple countries would be extremely tedious, but luckily an easier way exists: The Madrid Protocol for International Registration of Trademarks. The Madrid Protocol provides an efficient way for federal trademark owners to protect their trademarks in multiple countries though a single application that is processed by their home country’s trademark office.

HOW TO APPLY

An individual or entity seeking international trademark registration through the Madrid Protocol is required to register their trademark with a country’s trademark office that has agreed to be part of the Protocol.  Generally, one may register in a country’s trademark office if its entity was formed there, or if an individual is a citizen/domiciled in the country. The next step is to submit an international application through this same trademark office, which will certify and forward the application to the World Intellectual Property Organization (“WIPO”).  An international registration application can be filed in English, French or Spanish, and includes filings fees amounting to one a basic fee, a fee for each class of goods/services if filing in excess of three classes, and an additional fee for each country in which registration is sought.

APPLICATION EXAMINATION

Once the International Bureau of WIPO receives your international application, WIPO will conduct a formal examination of your international application. If WIPO approves the application, then the mark will be recorded in the International register and it will be published in the WIPO Gazette of International Marks.

Next, the individual trademark offices of the applied for countries will conduct a substantive examination to determine the scope of protection according to their domestic legislation. WIPO has no control over the national trademark offices’ decisions regarding the scope of the protection, therefore the national offices decide the scope of your trademark protection in their country. Once the national trademark office makes their decision, WIPO will record the decisions of these offices and record them in the International Register.  An international trademark registration is effective for 10 years and it can be renewed for 10-year periods. The effects of an international registration start from the date of the international registration in each country that protection was sought.

I WANT TO REGISTER MY TRADEMARKS INTERNATIONALLY. WHAT NOW?

If you have questions or would like to learn more, please give us a call at (415) 633-6841, or email us at info@bendlawoffice.com.

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.

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Intellectual Property Basics for Cannabis

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By: Vivek Vaidya There is no denying that the cannabis industry is growing rapidly, with many states allowing medicinal and/or recreational use. Interesting and innovative brands have emerged as a result of this decriminalizing of cannabis. Like other brands, cannabis brands are looking for ways to protect their intellectual property (“IP”). However, unlike other brands,… Read More

By: Vivek Vaidya

There is no denying that the cannabis industry is growing rapidly, with many states allowing medicinal and/or recreational use. Interesting and innovative brands have emerged as a result of this decriminalizing of cannabis. Like other brands, cannabis brands are looking for ways to protect their intellectual property (“IP”). However, unlike other brands, cannabis is not legal on the federal level, and not every state has enacted laws permitting medicinal or recreational use. Even if a particular state has enacted legislation permitting medicinal and/or recreational use, those laws differ from other states’ laws on the subject. This creates a very confusing legal environment to navigate for cannabis brands trying to protect their IP. This article offers a brief survey of the available IP protections for cannabis brands.

Trademark/Trade Dress

It is possible for cannabis brands to obtain trademark/trade dress protection for marks that relate to cannabis, but not for products that contain cannabis. For example, in Trans-High Corporation Inc. v. Sharik Kerawala et al., No. 4:14-cv-00752 (E.D. Texas 2014), High Times magazine, a popular marijuana lifestyle magazine, sued a Texas business for trademark infringement stop its use of “High Times Lifestyle” and “High Times Smokeshop” in association with marijuana-themed retail and online stores. The court issued an injunction and damages in favor of High Times in 2015.

However, the United States Patent and Trademark Office (“USPTO”) does not permit registration of products that contain cannabis. While cannabis strains and other cannabis products have custom effects that may identify their source in the eyes of the consumer, the Lanham Act Section 1052 (a) bars registration of immoral or scandalous materials. This includes cannabis, which is still a Schedule I drug under the Controlled Substances Act. Even though marijuana trademarks cannot be registered with the USPTO, it is advisable for cannabis brands to perform due diligence to ensure that their mark does is not similar to another mark in the cannabis industry because of state trademark registrations and common law trademark rights as discussed below.

One option for cannabis brands and dispensaries is to register your mark with the state in which you conduct business (assuming your brand is sold in a state in which cannabis sales are legal and your state allows registration). This is less expensive than federal registration, but state registration only protects a trademark in the particular state in which you register. However, it is important to be aware that many states have similar morality clauses as the Lanham Act and therefore will not allow registration. Moreover, famous strains and other cannabis products could be so common that they are considered generic, which leaves them unprotected under trademark law.

Another way to protect your mark is to simply use the mark in commerce, which affords you what is called common law rights. These trademark rights are limited to the geographic area in which they are used in business. It is important to maintain detailed books and records of usage to negate or assert any claims for or against your common law trademark rights.

Copyright

Copyright registration is another option for cannabis brands to protect their IP. Unlike federal trademarks, the Copyright Act contains no prohibitions on the subject matter of the works subject to copyright protection. Creative works used by cannabis brands such a illustrations or photographs can be protected by copyright law. This adds an additional enforcement mechanism and could entitle you to statutory damages under the Copyright Act.

Patent

The future is unclear as to whether patents can protect cannabis strains, methods of growth and assembly. The USPTO has repeatedly rejected cannabis related filings for similar reasons as the Lanham Act, namely because they are scandalous or immoral. However, the USPTO has issued patents for smoking devices used for marijuana and the Patent Act, like the Copyright Act, does not contain a morality clause. Companies are already rushing to file patents in this cutting edge area, examples of which are renowned cannabis cultivator Ben Holmes’ Otto II strain. However, if history tells us anything, the USPTO will likely reject these cannabis related patents for the reasons they have in the past, namely that they are scandalous or immoral.

Trade Secret
Until the USPTO takes a clear stance on cannabis patents, the best way to protect cannabis products and methods of growth is trade secret law. Like state trademark registrations, state law governs trade secrets. Trade secret law protects information of economic value that is not generally known or readily ascertainable to the public, as long as you have taken sufficiently reasonable efforts to keep a secret. There are no formal applications; you just need to take reasonable efforts to keep the information a secret. Employee confidentiality agreements and NDAs are examples of ways trade secret law can protect cannabis brands.

If you are involved with the cannabis industry and would like to discuss protecting your IP, please give us a call at (415) 439-0153, or email us at info@bendlawoffice.com.

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.

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How to Identify My Trademarks

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By: Vivek Vaidya Building a strong reputation for the goods and services you provide does not happen overnight.  It takes dedication and hard work to develop your brand and customer base, and that is why identifying and protecting your trademark is vital to the growth of your business. A trademark is a set of words,… Read More

By: Vivek Vaidya

Building a strong reputation for the goods and services you provide does not happen overnight.  It takes dedication and hard work to develop your brand and customer base, and that is why identifying and protecting your trademark is vital to the growth of your business.

A trademark is a set of words, a logo, or a slogan that the consuming public comes to associate with your products or services.  When a customer sees your trademark, it conjures the entire experience they had when dealing with you or your company: the quality of the goods and services, the people they dealt with, the tone of the experience, and intangible gut feeling they have about the brand.  Even potential customers who have yet to use your products or services may have an impression about your brand through exposure to marketing or hearing others’ reviews. Trademarks are critical to any business because the goodwill they represent has tangible value. It allows consumers to make quicker decisions about where to direct their resources, which means a business with a strong trademark will have steady and growing revenue.  In short, everything your brand stands for is represented by a simple trademark.

There are various types of trademarks, but the most basic are the following:

Word Mark

A word or collection of words that are used in association with your products or services, often seen in advertisements or on products/product packaging.

Slogan

A phrase, often used in tandem with a word mark or a logo, that is displayed in conjunction with your products or services.

Logo

A distinctive design that is used in connection with your products or services.

Using marks in the three categories above allows you to grow the goodwill between consumers and your brand.  By establishing a trademark, you can prevent competitors from using the exact mark, or any confusingly similar marks.  Registering trademarks with the United States Patent and Trademark Office (USPTO) is the best way to protect your trademark, and is essential for any serious brand.  To learn more about protecting your trademarks, contact Bend Law Group, PC at (415) 633-6841 or info@bendlawoffice.com. 

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.

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Federal Trademark Registration: Principal vs. Supplemental Register

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By: Vivek Vaidya A trademark can be registered with the United States Patent and Trademark Office on either the principal or supplemental register. Registration on the principal register provides more trademark protection than on the supplemental register. However, there are a host of benefits for registering the mark on the supplement register if it does… Read More

By: Vivek Vaidya

A trademark can be registered with the United States Patent and Trademark Office on either the principal or supplemental register. Registration on the principal register provides more trademark protection than on the supplemental register. However, there are a host of benefits for registering the mark on the supplement register if it does not meet the requirements of the principal register.

A trademark can register on the principal register if it is fanciful, arbitrary or suggestive. A fanciful mark is a made up word, such a Kodak for cameras. An arbitrary word is one that has meaning, but not in association with the goods or services it is connected to as a trademark. A famous example of an arbitrary trademark is Apple for computers, as the fruit has nothing to do with computers. A suggestive trademark is one that suggests the type of good or service with which it is associated, but still requires consumers to make some sort of connection in their own mind. An example is Microsoft, which is suggestive of being used in association with software for microcomputers but still requires an individual to think for a moment in order to realize the relationship between the word and the goods.

While fanciful, arbitrary, and suggestive marks can all register on the principal register, a descriptive mark cannot.  A descriptive mark is one that describes the goods or services with which it is associated. One of the reasons that a descriptive mark cannot register on the principal register is the USPTO’s fear that one party will have a monopoly over a commonly used word in a particular industry. For example, the trademark Homemade Ice Cream for an ice cream shop describes exactly the goods and services associated with the trademark.  However, businesses still like to use descriptive marks because it can be a great marketing tool that attracts customers, even if the trademark does not have strong legal rights.

This is where registration on the supplemental register comes into play; descriptive trademarks can be registered on the supplemental register.

While registration on the supplemental register does not provide a presumption of ownership throughout the United States, it is still a federal registration that prevents other similar trademarks from registering with the USPTO, even on the principal register. There is also the deterrent effect, as new businesses who see a trademark registered on the supplemental register will likely not use the mark to avoid a legal dispute. Therefore, there still are good reasons to register a trademark on the supplemental register, even if it is descriptive and cannot be registered on the principal register.
If you would like help registering your trademark on the USPTO’s principal or supplemental register, or if you have general questions about the topic, please do not hesitate to give us a call at (415) 633-6841, or email us at info@blgtrademarks.com.

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.

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Efficiently Enforcing Your Trademarks: The Importance of Monitoring Services

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By: Vivek Vaidya Obtaining a trademark registration with the United States Patent and Trademark Office is an important step for any business.  It carries the presumption that the owner of the registration owns the mark in all 50 states and is a way of establishing legitimacy in the marketplace. While ownership of a trademark registration… Read More

By: Vivek Vaidya

Obtaining a trademark registration with the United States Patent and Trademark Office is an important step for any business.  It carries the presumption that the owner of the registration owns the mark in all 50 states and is a way of establishing legitimacy in the marketplace.

While ownership of a trademark registration allows you to prevent others from using a confusingly similar mark, you have a duty to actively enforce your trademark.  Failing to do so can actually erode your trademark rights. Allowing others to use the same mark is evidence that your trademark is not a strong one.

The USPTO does some work for owners of federal registrations in preventing confusingly similar marks from passing their examination process, but the fact is that the examiners who review trademark applications are people and the determination whether a mark infringes on another is a multi-factor balancing test.  Two reasonable people can come to different conclusions when reviewing the same trademark application.

This is why the USPTO provides an alternative avenue of protecting your rights.  As those who have gone through the registration process may know, the last step in the process after the examiner approves an application is called an Opposition Period.  During this 30-day window, third parties can formally oppose an application, and argue that it should not mature into registration because doing so would infringe upon their trademark rights.  A trademark owner can keep track of applications that are in the Opposition Period because they are published weekly on the Official Gazette, an USPTO publication that can be hundreds of pages long.  However, searching through the Official Gazette each week will make any normal person’s eyes glaze over.

This is where monitoring services come in.

Various companies provide software services to monitor the Official Gazette for confusingly similar trademarks that are progressing towards registration.  Signing up with these services allows trademark owners to be notified when such an application exists. At this point, the owner can work with an attorney to form a strategy for opposing the application.
At the end of the day, you as a trademark owner are responsible for policing your trademark rights, and not doing so erodes those rights.  Monitoring the Official Gazette for potentially infringing trademarks is extremely tedious, which makes monitoring services very attractive.  Stopping potential infringers in their tracks during the application process is an efficient way to stop infringement before it occurs, reduce the risk of expensive litigation down the road, and ensure that your trademark rights are protected.

If you are interested in monitoring services, having an attorney monitor on your behalf, or would like legal aid with opposition proceedings or trademark disputes, we can be of aid.  Please call (415) 633-6841 or email us at info@blgtrademarks.com for further assistance.

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.

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Copyright Basics

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By: Vivek Vaidya What Can Be Copyrighted?  A copyright is given to any expression of an idea, fixed in a tangible medium, that contains at least a modicum of creativity.  In simpler terms, copyright extends to any tangible creation that required the slightest of human discretionary choice to create.  A scribble on a piece of… Read More

By: Vivek Vaidya

What Can Be Copyrighted? 

A copyright is given to any expression of an idea, fixed in a tangible medium, that contains at least a modicum of creativity.  In simpler terms, copyright extends to any tangible creation that required the slightest of human discretionary choice to create.  A scribble on a piece of paper can be protected by copyright law.

What Rights Do Copyrights Give You? 

There are 6 rights associated with copyright protection: 

  1.  To reproduce the copyrighted work in copies or phonorecords;
  2. to prepare derivative works based upon the copyrighted work;
  3. to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
  4. in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;
  5. in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and
  6. in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

A copyright generally lasts for the life of the author plus 70 years, meaning you can pass it down for future generations to profit from.

Benefits Of Registration With The U.S. Copyright Office 

A copyright is created when the work itself is created.  That means you own a copyright even if you do not register the work.  However, there are a host of essential benefits for registering your copyrights, including the following:
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  • Provides Notice:  Registering your copyright with the U.S. Copyright Office puts others on notice that you are the owner of the copyright.  You can always license, or completely sell one or all of the 6 rights associated with a copyright above. Providing notice means opening up the opportunity for monetizing your copyright, especially when others want to perform or display your work, or make derivative works based on yours.
  • Registration is required to sue for infringement:  In order to sue for copyright infringement in federal court, you have to have your copyright registered.  Therefore, registration is essential to actually enforcing your rights.
  • Five year presumption:  Registering a copyright within 5 years of publishing the work give you the presumption in court that the facts in the registration are all true.  This makes it much easier to win a case, because the defendant then has the burden of proving that they did not infringe on your copyright. The law is on your side, and legal fees are greatly reduced.

Conclusion

Registering a copyright is an essential process for any person who is looking to make a living off their creativity.  You automatically get basic copyright protection when you create the work, but registering it protects it at a much more substantial level because of the enforcement power, and it opens to the door to all types of new opportunities for growth and monetization.

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.

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Copyright Assignment vs. Copyright License

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By: Vivek Vaidya Copyright owners have a bundle of exclusive rights that include the right to publish, copy, distribute, display, perform, and create derivative works based on the original. When giving another person permission to do any of those things with your work, you need a license or assignment agreement. Having the proper agreement in… Read More

By: Vivek Vaidya

Copyright owners have a bundle of exclusive rights that include the right to publish, copy, distribute, display, perform, and create derivative works based on the original. When giving another person permission to do any of those things with your work, you need a license or assignment agreement.

Having the proper agreement in place will ensure that your intentions are met in terms of who will maintain ownership over your copyright and what exact rights out of your bundle of rights you’ll be giving the other party.

Copyright Assignment

With a copyright assignment, you are contracting to give someone else your entire copyright. Upon execution of the agreement, the ownership of the copyright will transfer from one party to another. Once you assign your copyright, you may not publish your work even if you were the original author.

Assignment with Reversion

A newer type of assignment is an assignment with reversion. A reversion is a future right to own the copyright. Thus, the copyright will be granted to another person, who owns the copyright for a period of time or until a condition is met, and then the copyright reverts back to the original owner. In some cases, the original owner will have to pay for the reassigning of the copyright.

Copyright License

If you want to maintain ownership of the copyright, a license is a better option. With a license, you’ll be maintaining ownership, while granting permission for another party to use your work in a particular way. It’s very important to carve out the scope of the permitted use carefully to ensure that you’re not granting an over-inclusive set of rights.

Other important considerations are the license’s exclusivity, duration and payment terms. Parties may negotiate for whether the license is exclusive, meaning that the licensee will be the only person afforded those rights and the licensor will not grant these rights to anyone else, or whether the license is non-exclusive, meaning that the licensee is not the only person or entity being granted the particular rights. The license agreement’s duration shall be clearly provided, including both parties’ rights to terminate. Finally, how the licensor will be paid for the granting of the license should be laid out.

Assignments and Licensing Agreements should be drafted by an attorney to ensure that existing and future rights are protected, while keeping in mind the overall business objectives and creative pursuits. If you are thinking about signing a license or assignment, please consult with an attorney to make sure you understand every provision and the agreement as a whole.

If you would like help reviewing or drafting an Assignment or Licensing Agreement, or if you have general questions about the topic, please do not hesitate to give us a call at (415) 439-0153, or email us at info@bendlawoffice.com.

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.

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