On July 14, 2021, Senate Majority Leader Chuck Schumer, together with Senate Finance Committee Chair Ron Wyden and Senator Cory Booker, released a discussion draft of the Cannabis Administration and Opportunity Act (the...more
7/28/2021
/ Advertising ,
Brand ,
Cannabis Products ,
Cannabis-Related Businesses (CRBs) ,
Controlled Substances ,
Controlled Substances Act ,
Decriminalization of Marijuana ,
Dietary Supplements ,
Dispensaries ,
Federal Food Drug and Cosmetic Act (FFDCA) ,
Food and Drug Administration (FDA) ,
Interstate Commerce ,
Marijuana ,
Marijuana Related Businesses ,
Marketing ,
Product Labels ,
Proposed Legislation ,
Recreational Use ,
Trademark Registration ,
Trademarks ,
TTB
[co-author: Richa Patel, Summer Associate]
The July 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses fluid trademarks and the Cannabis Administration and Opportunity Act. Plus, check out the answer key...more
7/26/2021
/ Advertising ,
Artists ,
Brand ,
Cannabis Products ,
Cannabis-Related Businesses (CRBs) ,
Controlled Substances ,
Controlled Substances Act ,
Decriminalization of Marijuana ,
Dietary Supplements ,
Dispensaries ,
Federal Food Drug and Cosmetic Act (FFDCA) ,
Fluid Trademarks ,
Food and Drug Administration (FDA) ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Interstate Commerce ,
Logos ,
Marijuana ,
Marijuana Related Businesses ,
Marketing ,
Product Labels ,
Proposed Legislation ,
Recreational Use ,
Trademark Registration ,
Trademarks ,
TTB
The June 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses recent litigation surrounding copyright registration invalidation and implications of the increase in trademark application filings at the USPTO....more
6/29/2021
/ Cannabis Products ,
Cannabis-Related Businesses (CRBs) ,
Copyright ,
Copyright Infringement ,
Copyright Litigation ,
Copyright Office ,
Copyright Registration ,
Evidence ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Intent to Defraud ,
Marijuana ,
Marijuana Related Businesses ,
Patents ,
The Copyright Act ,
Trademark Application ,
Trademark Registration ,
Trademarks ,
USPTO
Trailblazing Legislation to Watch in 2021 -
Welcome to our first installment of Watching the Pot™, which will provide summaries on recent buzz-worthy cannabis information, including decisions, legislation, news, and cases...more
12/30/2020
/ Cannabidiol (CBD) oil ,
Cannabis Products ,
Cannabis-Related Businesses (CRBs) ,
Controlled Substances Act ,
Decriminalization of Marijuana ,
Dispensaries ,
Federal Food Drug and Cosmetic Act (FFDCA) ,
Hemp ,
Hemp Cultivation ,
Hemp Related Businesses ,
Legislative Agendas ,
Marijuana ,
Marijuana Cultivation ,
Marijuana Related Businesses ,
Medical Marijuana ,
Trademark Registration
Creativity abounds in the CBD industry – both in the wide variety of products infused with it, and in the efforts undergone by applicants trying to circumvent the Trademark Act to register per se unlawful CBD-infused...more
10/3/2020
/ Cannabidiol (CBD) oil ,
Cannabis Products ,
Commerce Clause ,
Farm Bill ,
Federal Food Drug and Cosmetic Act (FFDCA) ,
Hemp ,
Intellectual Property Protection ,
Marijuana ,
Trademark Act ,
Trademark Application ,
Trademark Registration ,
Trademarks ,
Use in Commerce ,
USPTO
The September 2020 issue of Sterne Kessler's MarkIt to Market® newsletter discusses the state of the CBD industry, including a recent non-precedential TTAB decision regarding CBD-infused supplements, as well as the open gTLD...more
The USPTO has been working to combat misleading and fraudulent solicitations sent to federal trademark applicants/registrants and is calling on the public to report and identify these bad actors....more
7/24/2020
/ Fraud ,
Intellectual Property Protection ,
LinkedIn ,
Risk Management ,
Scams ,
Solicitation ,
Text Messages ,
Trademark Application ,
Trademark Ownership ,
Trademark Registration ,
Trademarks ,
USPTO
A June 16, 2020 precedential decision by the Trademark Trial and Appeal Board held that Federal trademark registration is not available for food, beverages, or nutritional/dietary supplements to which hemp-derived cannibidiol...more
7/17/2020
/ Cannabidiol (CBD) oil ,
Corporate Branding ,
Dietary Supplements ,
Federal Food Drug and Cosmetic Act (FFDCA) ,
Federal Trademark Register ,
Hemp ,
Marijuana-Infused Edibles ,
Rebranding ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks
The June 2020 issue of Sterne Kessler's MarkIt to Market® newsletter leads with breaking news of today's Supreme Court's decision in favor of Booking.com. Other topics discussed include copyright applications covering a...more
7/8/2020
/ Acquired Distinctiveness ,
Appeals ,
Booking.com ,
Cannabidiol (CBD) oil ,
Copyright Applications ,
Coronavirus/COVID-19 ,
Domain Name Registration ,
Domain Names ,
Generic Marks ,
Lanham Act ,
Personal Protective Equipment ,
Prioritized Examination ,
Scams ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
United States Patent and Trademark Office v Booking.com BV ,
USPTO
In a non-precedential opinion issued this month, the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board affirmed the refusal to register Jos. A. Magnus & Co., LLC’s mark MAGNUS for “whiskey, gin, and...more
2/10/2020
/ Acquired Distinctiveness ,
Lanham Act ,
Prosecution History Estoppel ,
Surnames ,
Trademark Act ,
Trademark Application ,
Trademark Registration ,
Trademark Searches ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
On October 29, 2019, the U.S. Department of Agriculture (USDA) released its long-awaited interim final rule establishing a national regulatory framework for domestic hemp production, called the U.S. Domestic Hemp Production...more
12/4/2019
/ Cannabis Products ,
Cannabis-Related Businesses (CRBs) ,
Food and Drug Administration (FDA) ,
Hemp ,
Hemp Cultivation ,
Interstate Commerce ,
Personal Brands ,
Trademark Application ,
Trademark Registration ,
Trademarks ,
Transportation Industry ,
USDA ,
USPTO
On April 10, 2019, the United States Court of Appeals for the Federal Circuit redesignated as precedential its January 14, 2019 decision upholding the Trademark Trial and Appeal Board’s (TTAB) decision affirming refusal of...more
5/9/2019
/ Administrative Appeals ,
Displays ,
Point of Sale Terminals ,
Precedential Opinion ,
Trademark Litigation ,
Trademark Manual of Examining Procedure (TMEP) ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
Use in Commerce ,
Websites
Following the enactment of the 2018 Farm Bill [see related article1], the United States Patent and Trademark Office (USPTO) just this morning released a new Trademark Examination Guide for marks covering cannabis and...more
5/3/2019
/ Cannabidiol (CBD) oil ,
Controlled Substances Act ,
Farm Bill ,
Federal Food Drug and Cosmetic Act (FFDCA) ,
Goods or Services ,
Hemp ,
Marijuana ,
Marijuana-Infused Edibles ,
New Regulations ,
Trademark Application ,
Trademark Examination ,
Trademark Examination Guide ,
Trademark Registration ,
Trademarks ,
USPTO
The April 2019 issue of Sterne Kessler's MarkIt to Market® newsletter addresses the legal status of cosmetic products containing hemp-derived CBD and guidance on “point of sale” specimens sufficient to support...more
When examining trademark applications, the United States Patent and Trademark Office (USPTO) considers whether the applied-for mark is confusingly similar to any registered or prior-filed marks by applying the following...more
Design patents are often the go-to option for protecting the visual features, or design, of a product. But design patent protection is not always available, such as after the product has been on sale, offered for sale, or...more
10/3/2018
/ Acquired Distinctiveness ,
Adidas ,
Appeals ,
Design Patent ,
Fashion Branding ,
Fashion Design ,
Inherently Distinctive ,
Intellectual Property Protection ,
Nonfunctionality ,
Preliminary Injunctions ,
Sketchers ,
Trade Dress ,
Trademark Registration ,
Trademarks
Earlier this month the PTO announced the inception of its Trademark Specimen Protest Email Pilot Program; as the name suggests, the program encourages the public to report any specimens that do not appear to exhibit marks as...more
The holiday season in the United States starts around Halloween and extends for a two-month period until the beginning of January. The holiday marathon sparks a flurry of purchasing events – such as booking airline tickets,...more
In May of 2014, this newsletter discussed the prevalence of trademark and domain name scams, and offered tips on how to avoid being duped by fake service offerings (see "Scammers Still Be Scamming" here). Unfortunately,...more
When seeking particular services, consumers are often drawn into a business based on branding and advertising found near the location – whether by signage on or around the establishment, or by glimpses of the services being...more
"In theory, there is no difference between theory and practice. But, in practice, there is.”
Although this quote is attributed as a remark overheard at a computer science conference in Walter J. Savitch’s Pascal: An...more
The November 2016 issue of Sterne Kessler's MarkIt to Market® includes practical tips for registering certification marks, a look at the Trademark Trial and Appeal Board's latest revisions to the Rules of Practice-its most...more
In today's marketplace, companies are constantly seeking their moment, day, or --if they are lucky--year on the top of the "best of" list for new, unique, and/or fabulously redesigned goods or services. The sheer number of...more
The June 2016 issue of Sterne Kessler's MarkIt to MarketTM newsletter discusses the rise in additional specimen requests from the USPTO, examines the TTAB's decision in In re Florists' Transworld Delivery, Inc., and notes...more
Brand owners seeking federal protection for their service marks from the U.S. Patent and Trademark Office ("USPTO") often struggle with how to define their services in the application.
While the Trademark Act defines...more