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.

 

 

 

 

Florida inching closer to medical marijuana regulations

Medical marijuana has been a reality in Florida for several years via the “Charlotte’s Web” low-THC path, or, via the path for patients who are terminally ill.  However, as of January 3, 2017, a new path has been created for a much more inclusive class of medical marijuana patients.  The new protocol will not be limited to low-THC or to terminally-ill patients. Rather, it will be available to those with specifically-listed conditions such as cancer, glaucoma, PTSD, HIV, and, a “chronic nonmalignant pain” catch-all condition.  On June 23, 2017, Governor Scott approved Senate Bill 8-A, currently found at Chapter 2017-232 of the Laws of Florida.

While the laws provide a specific framework for the new medical marijuana system, many details are yet to be drafted, which is the current task of the Department of Health’s Office of Medical Marijuana Use.  “But wait, this is an intellectual property blog, why are we writing about this?”  And, “I’ve heard that Florida uses the ‘vertical integration’ model, which limits participants in the industry.”  True.  But, as more patients are added to the medical marijuana registry, more licenses will be added for cultivators and treatment centers (yes, they must be the same entity).  And, we expect that each year there will be adjustments to the regulations and laws as the market takes shape.

So, why is this important from an intellectual property perspective?  For a number of reasons.  For example, as long as marijuana is a Class 1-scheduled substance under the Controlled Substances Act, any cultivation, possession, sale, transport, etc. of cannabis is illegal at the federal level.  It does not matter that Florida is legalizing certain aspects.  Thus, your brand for a medical marijuana product is likely unregistrable via the United States Patent and Trademark Office.  (There are registrations for marijuana-related goods and services, but if the federal application reveals goods or services that in any way might violate the CSA, then the application will likely be rejected.  See my prior blog post HERE.)

Despite the federal obstacles, your brand may be registered under Florida’s state trademark registration system.  For example, there are already state registrations for businesses such as a nursery/dispensing organization and an independent cannabis testing lab.  It therefore appears as if Florida will issue registrations for trademarks which would otherwise not be allowed registration at the federal level.

But, before you start filing your state trademark applications, there are numerous issues you need to discuss with your attorney, such as the requirement that you are actually using the mark in commerce at the time of filing the application.  Florida does not offer an “intent-to-use” application as is available at the federal level. Thus, you cannot “reserve” a brand by filing an intent-to-use application.  More importantly, if you are a licensed dispensing organization or seek to become one, you will be bound by the new law, and the new law contains restrictions on your advertising practices, including requiring Department of Health approval of your trade name!  Here’s an example from Chapter 2017-232:

A medical marijuana treatment center may not engage in advertising that is visible to members of the public from any street, sidewalk, park, or other public place, except:

1. The dispensing location of a medical marijuana treatment center may have a sign that is affixed to the outside or hanging in the window of the premises which identifies the dispensary by the licensee’s business name, a department-approved trade name, or a department-approved logo. A medical marijuana treatment center’s trade name and logo may not contain wording or images commonly associated with marketing targeted toward children or which promote recreational use of marijuana.

2. A medical marijuana treatment center may engage in Internet advertising and marketing under the following conditions:

a. All advertisements must be approved by the department.

b. An advertisement may not have any content that specifically targets individuals under the age of 18, including cartoon characters or similar images.

c. An advertisement may not be an unsolicited pop-up advertisement.

d. Opt-in marketing must include an easy and permanent opt out feature.

Another example comes from the section of the law which states what must be included on the packaging for the medical marijuana product:

The product name, if applicable, and dosage form, including concentration of tetrahydrocannabinol and cannabidiol.  The product name may not contain wording commonly associated with products marketed by or to children.

As you can see, the Department of Health must approve your trade name and logo.  Further, your Internet-based advertising must be approved by the Department of Health.  Oddly, there is a specific ban on “unsolicited pop-up advertisements,” and there is an “opt-out” requirement for marketing (which is likely already a requirement via the federal CAN-SPAM law).  As for the packaging requirement, while the law does not say that the Department must approve brand names, the current guidance is simply that the brand name of the product “may not contain wording commonly associated with products marketed by or to children.”  One wonders what the drafters had in mind when banning names associated with products marketed “by” children.  I understand not using terms associated with products marketed “to” children, but “by” children?  As in, lemonade and Girl Scout Cookies?  Aha!  Girl Scout Cookies happens to be the name of a very popular strain of cannabis, so perhaps that was the reason for including “by” children.  This provision would certainly prohibit selling a “Girl Scout Cookie” strain of cannabis concentrate oil.

Since the Department of Health is only just now writing the relevant regulations, we don’t know what other implications there may be for marijuana-related-business branding, but we do know that branding will be tightly controlled.

Of course, this is just one small issue related to intellectual property and the cannabis industry.  Other issues such as trademark licensing, the federal/state disconnect on trademark registrations, patenting cannabis-related inventions, trade secrets, copyrightable content (and ownership thereof), and many more remain just as important.  Given the high level of risk and high-cost of entry into this market, it is critical to carefully and cautiously plan your participation.  And, while the majority of the States now have some form of legal marijuana use, it is worth repeating (again, and again, and again) that federal law treats the cultivation, possession, and use of marijuana for any purpose – even a medical one – as a crime, regardless of state law.  Accordingly, the importance of due diligence cannot be overstated.

Florida Medical Marijuana CLE in June

I’ll be giving a short presentation on the intellectual property issues relevant to medical marijuana businesses – whether it’s a dispensary, farm, “lifestyle” brand, or any other company with an interest in medical (or legal recreational) marijuana.

The CLE is in Miami on June 29 and 30.

I encourage you to take a look at the agenda for this CLE.  Not only is John Morgan speaking at the event, but some highly-respected and experienced attorneys will also be speaking, such as folks from Harris Bricken LLP.  I’m looking forward to this CLE not only for the chance to speak but also for the chance to hear and learn from these industry veterans.

Here’s a link to the program, and these are the main topics:

  • Amendment 2 Rules Update
  • Federal vs. State Conflict
  • Taxes and the Treatment of Cannabis Income
  • Real Estate and Land Use
  • Intellectual Property
  • Marijuana Banking
  • Investing in the Cannabis Industry
  • Ethical Considerations and Legalized Marijuana
  • Medical Experience in Other States
  • Contracting with Marijuana Related Businesses
  • Insurance in the Cannabis Industry

Meet Little Debbie

In preparing for my presentation on how Florida’s vote on medical marijuana will affect intellectual property issues within Florida, I got the cliche idea to maybe pass out non-medicated brownies at my presentation.  I know.

But, before discounting the idea, I thought about Little Debbie’s “Cosmic Brownies”:

brownies_cosmic-2wc9v5

Then, like a true obsessed trademark attorney, I wondered if Little Debbie had a trademark registration as I would not be surprised if “cosmic brownies” might be a term used to brand medicated brownies.  Sure enough, after learning that the Little Debbie brand is actually owned by McKee Foods Kingman, Inc., I found the registration for COSMIC for use with brownies and other snacks:

http://tsdr.uspto.gov/#caseNumber=76479218&caseType=SERIAL_NO&searchType=statusSearch

That led me to another awesome discovery – Little Debbie is real!  Certain Little Debbie treats are a guilty pleasure of mine.  Oatmeal Cream Pies, Christmas Trees, etc – I’ll eat em.  So, learning that this childhood hero is real, well, it was a good day.

How did I find out she is real?  No, I didn’t simply read the Little Debbie website.  It was this little statement in some of the USPTO records for registrations for “LITTLE DEBBIE”:  “Little Debbie” identifies Debbie McKee-Fowler, a living individual whose consent is of record. The portrait or likeness shown in the mark identifies Debbie McKee-Fowler, a living individual whose consent to register is made of record.”

As I blogged HERE, if a mark identifies a living individual, consent must be granted to use the name or likeness of that individual before a registration will issue.

Here’s how “Little Debbie” looks now:

See also: http://www.huffingtonpost.com/2015/06/16/real-life-little-debbie_n_7597256.html

Pretty cool!

Medical Marijuana – The Wild, Wild, East(coast)

Entrepreneurs are flooding Florida as the state’s citizens prepare to vote on legalizing marijuana for medicinal purposes this November. The initiative is on the ballot, and signs are pointing toward enough support to pass the amendment to the Florida Constitution.

As with any new industry, the rush to make a buck has been swift and fierce. Medical marijuana schools are being advertised, seminars are being held at hotels, and law firms are ramping up to guide entrepreneurs through the state regulations. Of course, there are no state regulations yet, but the early bird gets the weed, and it makes sense to start consulting with your attorney of choice regarding what may happen in early 2015.

Clearly, medical marijuana is going to be a “Florida IP Trend” if it isn’t already.

But, the majority of intellectual property practice is based on federal law – the Lanham Act, the Copyright Act, and the Patent Act all arise out of either the Article I, Section 8, Clause 8 of the U.S. Constitution (copyrights and patents) or the Commerce Clause of the Constitution (granting the federal government the right to regulate interstate commerce, including interstate trademark use).

As you may have heard, marijuana remains illegal at the federal level, and trademark applications before the United States Patent and Trademark Office are being routinely rejected with essentially the same boilerplate language:

SECTIONS 1 AND 45 REFUSAL – NOT IN LAWFUL USE IN COMMERCE

Registration is refused because the applied-for mark, as used in connection with the goods and/or services identified in the application, is not in lawful use in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127.

To qualify for federal trademark/service mark registration, the use of a mark in commerce must be lawful.  Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (stating that “[a] valid application cannot be filed at all for registration of a mark without ‘lawful use in commerce'”); TMEP §907; see In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); CreAgri, Inc. v. USANA Health Scis., Inc., 474 F.3d 626, 630, 81 USPQ2d 1592, 1595 (9th Cir. 2007).  Thus, any goods or services to which the mark is applied must comply with all applicable federal laws.  See In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993) (noting that “[i]t is settled that the Trademark Act’s requirement of ‘”use in commerce,” means a “lawful use in commerce,” and [that the sale or] the shipment of goods in violation of [a] federal statute . . . may not be recognized as the basis for establishing trademark rights'” (quoting Clorox Co. v. Armour-Dial, Inc., 214 USPQ 850, 851 (TTAB 1982))); In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907.

The Controlled Substances Act (CSA) prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and marijuana-based preparations.  21 U.S.C. §§812, 841(a)(1), 844(a); see also 21 U.S.C. §802(16) (defining “[marijuana]”).  In addition, the CSA makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].”  21 U.S.C. §863.

In the present case, the application identifies applicant’s goods and/or services as follows: “Providing a web site that features informal instruction on the cultivation of medical marijuana.”

The evidence submitted with applicant’s response to the previous Office action plainly indicates that applicant’s identified services include activities that are prohibited by the CSA, namely, instruction on how to grow, cultivate, harvest and produce marijuana.

Because these goods and/or services are prohibited by the CSA, the applied-for mark, as used in connection with such goods and/or services, is not in lawful use in commerce.

 

There are currently 327 applications and/or registrations in the USPTO’s database which contain the word “marijuana” in the description of goods or services.  Of those 327, only 45 are (or were) actually registered.  While many of those 327 applications were rejected with language similar to that cited above, the few that squeaked by are either anomalies and/or the work of skilled trademark practitioners who know how to carefully craft a description of services.  (To be fair, many of the ones that have not been registered were allowed to be registered, but the applicants did not follow up with certain filing requirements, such as specimens of use.)

As an example of the division between allowable and not allowable, consider that a popular website located at http://www.leafly.com received a registration for LEAFLY for use with, among other things:

“Providing consumer information in the field of medical marijuana dispensary inventories and locations; providing links to web sites of others featuring consumer information on medical marijuana inventories and locations; providing a web site featuring the ratings, reviews and recommendations on products and services for commercial purposes posted by users; providing consumer information regarding medical marijuana dispensaries, inventories and locations”

and

“Providing health information in the field of medical marijuana, and regarding indications and effects of particular cannabis strains, and regarding medical marijuana dispensaries, inventories and locations”

Yet, an application for MARY N’ JANE for use with “Providing a web site that features informal instruction on the cultivation of medical marijuana” was rejected per the above language.  The difference is apparently that using the trademark in connection with marijuana cultivation instruction is not ok, but using the mark for general information about marijuana dispensaries is ok.  This logic is further supported by questions that USPTO Examining Attorneys are routinely asking of applicants with marijuana-based goods or services, namely:

Do the applicant’s classes, seminars, and/or workshops involve the provision of, instruction on how to grow, and/or instruction on how to obtain marijuana, marijuana-based preparations, or marijuana extracts or derivatives?

Are the applicant’s services lawful pursuant to the Controlled Substances Act?

If the answer to the first question is Yes, no registration for you.

So, what is the Florida-based medical marijuana entrepreneur to do?  State trademark registrations are an option, but Florida does not recognize “intent to use” applications like the USPTO does.  This means that even if you are planning to open a dispensary, nursery, or other marijuana-related establishment once the regulations are drafted and licenses are issued, you cannot apply for the state trademark registration now because you cannot yet legally run a medical marijuana facility in Florida.  The flood of state applications that will occur on Day 1 will be astounding, and anyone who has used Florida’s state registration system knows that this impending flood just might break the system.

Another interesting aspect of medical marijuana in Florida is that just last year our lawmakers passed the so-called Bong Ban Bill, making it illegal to sell virtually anything that can be used to smoke marijuana…but only if the seller intended for the item to be used in violation of the drug paraphernalia laws.  So, if you do not intend for people to use your hand-crafted glass pipe to smoke illegal substances, presumably you do not violate the law.  (As with everything on this blog, the preceding is not legal advice.  If you intend to sell pipes, you should consult an attorney.)  Once Amendment 2 passes and medical marijuana is legalized in Florida, I’m guessing that the “Bong Ban” will need some renovation.