Two new cannabis-related Florida trademark registrations

Here’s an update to my original post which presented Florida’s state-based trademark registrations.


COMPASSIONATE CARE OF FLORIDA (logo)

Class 44: MEDICAL SERVICES, NAMELY MEDICAL CANNABIS EVALUATIONS AND PERSONALIZED TREATMENT PLANS

Registration Number: 18000000053
Registration Date: January 16, 2018
First Use Date: August 15, 2017

SUNSHINE CANNABIS

Class 35: CONSULTING, PATIENT EDUCATION & ADVOCACY SERVICES IN ALL ASPECTS OF THE LEGAL FLORIDA MEDICAL CANNABIS INDUSTRY

Registration Number: 18000000080
Registration Date: January 24, 2018
First Use Date: December 13, 2013
Author’s Note:  This is owned by the same registrant for SUNSHINE CANNABIS for Class 25 “clothing” that was presented in my prior post (Fl. State Reg. No. T14000000621).  That earlier registration for clothing is from 2014.  Perhaps an early (and successful) attempt to “reserve” the name for cannabis-related services.

Canna We Register It? Yes We Can!

Florida’s state trademark registration system is, well, “quaint.”  Applicants cannot file trademark applications online – they must be mailed in with 3 copies of specimens.  You can only search the online Division of Corporations trademarks database by searching for the name of the mark or the mark owner, which means that you cannot search by the description of goods or services.

This makes searching for cannabis-related marks a bit difficult.  Because of that difficulty, and because I think my readers will find this interesting, I have compiled a list of all Florida trademark registrations with “cannabis” or “marijuana” in the mark or the goods and services description.  (This is not foolproof as someone could register, for example, SUNSHINE ACME WELLNESS for “medical services” related to Florida’s MMJ system without ever mentioning cannabis or medical marijuana in the trademark application.)

There aren’t many, and you may notice some technical or legal issues with some of the registrations.  Those issues are beyond the scope of this post.  This post is just an FYI list.  Also, many of these would likely not pass muster in other states, and, just because a company or individual might have a live trademark registration for specific goods or services, that does not mean that those goods or services are legal under federal or state law.  (Although, technically, a registration should only cover goods in lawful commercial use.)

Here you go, in no particular order, and with misspellings, etc. preserved:


GRATEFUL MEDS

Class 35 – CONSULTING SERVICES IN THE FIELD OF MEDICAL MARIJUANA/CANNABIS, MEDICAL MARIJUANA/CANNABIS EXTRACTS, FOOD PRODUCTS, NON-ALCHOLIC BEVERAGES

Registration Date: August 06, 2014

First Use Date: April 16, 2014

Registration Number: T14000000866


MJARDIN PREMIUM CANNABIS (logo)

Class 35 – DESIGN SERVICES, CONSULTING SERVICES, AND FACILITIES MANAGEMENT AND OPERATION, ALL IN THE FIELD OF AGRICULTURE

Registration Date: November 19, 2014

First Use Date: June 10, 2014

Registration Number: T14000001247


MEDICAL MARIJUANA TREATMENT CLINICS OF FLORIDA (logo)

Class 44 MEDICAL MARIJUANA PHYSICIAN CLINIC

Registration Date: February 14, 2017

First Use Date: January 20, 2017

Registration Number: T17000000142


COMPASSIONATE CANNABIS CLINIC

Class 44 – MEDICAL SERVICES, THE ASSESSMENT & TREATMENT OF PATIENTS SUFFERING FROM A VARIETY OF CHRONIC & DEBILITATING ILLNESSES

Registration Date: September 25, 2017

First Use Date: December 15, 2016

Registration Number: T17000001172


SUNSHINE CANNABIS

Class 25 CLOTHING

Registration Date: June 10, 2014

First Use Date: December 13, 2013

Registration Number: T14000000621


THE CANNABIS CLINIC

Class 42 – LEGAL SERVICES

Registration Number: T07000000033

Registration Date: January 09, 2007

First Use Date: August 01, 2006


THE PEOPLE WANT IT RATIONAL MARIJUANA LAWS AND A LITTLE JUSTICE

Class 25 – CLOTHING

Registration Number: 920070

Registration Date: December 29, 1978

Author’s Note:  This is no longer active, but I thought it was interesting given the date.  I think we’re still aiming for “rational marijuana laws” 40-years later…


MARIJUANA MUNCHIES

Class 29 – FOODS AND INGREDIENTS OF FOODS

Registration Number: 919314

Registration Date: June 27, 1978

Author’s Note:  This is no longer active, but I thought it was interesting.


ART 420 (logo)

Classes 25 and 41 – ART EVENT, ART SHOWCASE TO CREATE A MARKET FOR CANNABIS INSPIRED ART IN A GALLERY SETTING, MENSWEAR, LADIES WEAR, AND WRISTBANDS

Registration Number: T15000000586

Registration Date: May 27, 2015

First Use Date: March 16, 2015

Author’s Note:  Art420 is run by my friends and colleagues, Tamieka and Erik Range. Check them out!  Websites: Art420 and Range Law Firm.


FLORIDA CAN (logo)

Class 41 EDUCATION ON HOW TO CHANGE LAWS, LEGAL SUPPORT, MERCHANDISE, SUPPORTING THE EFFORT

Registration Number: T13000000152

Registration Date: February 05, 2013

First Use Date: October 26, 1998


DESIGN ONLY

Class 44 – MEDICAL PRACTICE PROVIDING PHYSICAL EXAMS AND CERTIFICATION I.D. CARDS FOR FLA. MEDICAL MARIJUANA CARD REGISTSRY; FILING HIPPA COMPLIANT

Registration Number: T14000001054

Registration Date: September 30, 2014

First Use Date: September 01, 2014


KNOX (logo)

Class 5 EXTRACTED CANNABIS, MEDICALLY USED FOR VARIOUS ILLNESSES AND DISEASES

Registration Number: T17000000539

Registration Date: May 05, 2017

First Use Date: December 01, 2016


MARYJANE LEGAL (logo)

Class 42 – LEGAL SERVICES FOR MEDICAL PATIENTS IN PAIN

Registration Number: T17000000757

Registration Date: June 06, 2017

First Use Date: March 23, 2017


MINDFUL MEDICINALS (logo)

Class 5 ALL-NATURAL GOURMET CANNABIS CANDY AND CBD (CANNABIDIOL HEMP OIL) SUPPLEMENTS

Registration Number: T17000000506

Registration Date: April 28, 2017

First Use Date: February 01, 2017


DOC MJ (logo)

Class 44 MEDICAL MARIJUANA RECOMMENDATIONS FOR FLORIDA RESIDENTS

Registration Number: T17000001341

Registration Date: October 27, 2017

First Use Date: August 10, 2016


GRASS ROOTS (logo)

Class 35 – FRANCHISES, CONSULTING, BUSINESS MANAGEMENT, RETAIL SHOPS, SCIENTIFIC STUDY & RESEARCH, WEBSITE, LEGAL RESEARCH ALL IN FIELD OF MARIJUANA

Registration Number: T15000000247

Registration Date: March 05, 2015

First Use Date: January 01, 2014


THE POT DOCS

Class 44 – MEDICAL PRACTICE PROVIDING PHYSICAL EXAMS AND CERTIFICATION I.D. CARDS FOR FLA. MEDICAL MARIJUANA CARD REGISTRY; FILING HIPPA COMPLIANT

Registration Number: T14000001053

Registration Date: September 30, 2014

First Use Date: September 01, 2014


Additional Disclaimers:

  • This list may not be exhaustive, although I hope it is.  There were a couple of registrations with cannabis leaves in logos that I left off the list, but they were either for drug/alcohol addiction programs or criminal legal services.  The purpose of this list was to try and show marks that were related to the new medical marijuana system.  Drug/alcohol programs and criminal defense firms have been using cannabis leaves in logos for years.
  • If you have a cannabis-related brand that you want to use in Florida and do not see it in the above list, DO NOT ASSUME IT IS AVAILABLE TO USE.
  • I may update this list on a rolling basis and may include owner information if there is interest.

 

 

 

 

UPDATE: Amazon Brand Registry: Logos (kind of) welcome now

Following up on this “Logos Need Not Apply” post.

This was what the requirements for the Amazon Brand Registry looked like a few months ago:

AmazonBrand

 

Now, they have added Mark Drawing Types 3 and 5, or, “AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S), LETTER(S)/NUMBER(S)” and “WORDS, LETTERS, OR NUMBERS IN A STYLIZED FORM” respectively.

See:

AmazonBrand-update

So, unless your registered trademark is a logo with no text anywhere on the mark, you can use your registration to enroll in the Amazon Brand Registry.

 

Govern Yourself Strangely

Writing and receiving demand letters is part of the daily grind.  We send and receive all types – the nice-ish demand when the facts aren’t 100% favorable.  The stern demand when there is egregious conduct (although I will never, ever write GOVERN YOURSELF ACCORDINGLY on a letter).  The outlandish demand with no legal basis (often sent by both pro se parties and attorneys alike, but not me of course).

For the most part, demand letters and responses are exercises in posturing, providing notice of bad behavior, and creating a record for future litigation.  But, every now and then attorneys can break out of their mahogany shell and write a demand letter that, a) has some humor, and b) does not engage in the typical “govern yourself accordingly and immediately cease and desist from XYZ…”

That brings me to a cease and desist letter sent by Netflix to the operator of a “pop-up bar” named The Upside Down and that has a Stranger Things theme.

The marketing looks like this:

ST-pop
Source: http://www.emporiumchicago.com/gallery/the-upside-down/

“The Upside Down” is the name given to an alternate reality within the show – it is a dimension.  As I’ve blogged before, even fictional brands can receive trademark protection.   While “The Upside Down” isn’t a brand on the show, it is a label or term that fans will obviously recognize.  In fact, it would not be unusual at all for fans to think that this pop-up bar has some official connection to the show.  It uses the “official” typeface and design (although that’s not uncommon) and many other show-related elements and themes:

Source: http://www.emporiumchicago.com/gallery/the-upside-down/

Put simply – this could have easily been a GOVERN YOURSELF ACCORDINGLY letter to shut down the temporary bar and protect the Stranger Things brand assets.  But that’s not what happened.  This did:

Netflix-Letter-Stranger-Things-Pop-Up-Bar (PDF)

ST-demand

Well played, Netflix Director/Senior Counsel of Content & Brand IP.  Many clients would not allow such a letter to go out because they perceive the mahogany/govern-yourself-accordingly treatment as the way things should be.  Anything other than that is, well, strange.  But strange can be good, and in this case a typical demand letter could have resulted in some Streisand Effect-level backlash.  Instead of that, Netflix’s legal department comes across as chill while still putting the pop-up bar on notice that this is a one-time deal and anything after that will not be tolerated.  Could this encourage others to do the same across the country?  Maybe, and I bet those letters won’t be as fun, but for now, even potential new pop-up bar operators are on notice that Netflix is watching.

GOVERN YOURSELF STRANGELY

 

Kevin W. Wimberly, Esquirious

 

Encls.

cc: Client

 

Amazon’s Brand Registry – Logos Need Not Apply

You may have heard of Amazon’s “Brand Registry.”  If not, it is a way for a brand owner to register and claim a brand name so that the claimant can better monitor for counterfeit goods, rogue sellers, and other issues on Amazon.

In a trademark application, there is an area for filling out “Correspondent” information.  This is typically where a lawyer’s information goes if a lawyer filed the application.  It’s also where Amazon looks to see where Amazon should send Brand Registry emails.  For example, if my client is ACME Anvils, and my client owns a registered trademark for “ACME Anvils,” then I am likely the “Correspondent” for that registration.  Thus, when ACME Anvils decides to list its anvils on Amazon and also wants to claim the ACME Anvils brand as its own, Amazon will send me, as the Correspondent, an email such as the following:

Hello,

We write to validate the identity of an individual seeking to enroll brand: “ACME Anvils” in Amazon Brand Registry. You are listed as the contact for the registered trademark for brand: “ACME Anvils”.

We are unable to provide you with the name of the applicant and have directed the applicant to contact you. In order to give the applicant approval to enroll brand: “ACME Anvils” in Amazon’s Brand Registry, provide the verification code listed below to the applicant. If you decline, do not provide the code.

Verification code:  [redacted]

Thank you in advance for your assistance, Amazon Brand Registry Support

Best regards,

Karthik

Amazon Brand Registry Support

When we receive such emails, we simply forward them to the client, and the client ultimately claims the brand on Amazon.

Sounds easy, right?  It is, but there is a MAJOR caveat:

AmazonBrand

That’s right – if you only have a logo-version of your mark registered with the USPTO, you cannot claim the brand via Amazon’s Brand Registry.  You must have a registration for the plain-text version of your mark.

(In case the graphic doesn’t show up, the highlighted portion says that to enroll in the Brand Registry, the brand name must be “a live registered trademark, which is a word mark and NOT a stylized, illustration, or design mark.”)

This is a very important reason to seek protection for the plain-text version of your mark in conjunction with, or prior to, seeking protection for your logo.  We often see clients who are adamant about only filing a trademark application for their logo.  This is understandable.  The logo was probably the product of much debate, love, and cash.  People seem more wedded to their logos than their simple textual brand names.  But, we typically advise clients to begin with the plain text version of the mark as it can be seen as providing “broader” protection because there are no claims to specific colors or symbols – it’s just the name of the mark regardless of how it’s presented.   However, if you sell goods that you would like to ultimately list on Amazon, at least under the current policy, you should consider registering the plaint-text version of your mark.