Trademarks

Another Florida Cannabis-related Trademark is Registered

Kevin WimberlyLeave a comment

Keeping the running list going…

FLORIDA MEDICAL MARIJUANA HEALTH CENTER & DESIGN OF A HALF CIRCLE AROUND A GREEN CROSS, MARIJUANA LEAF AND AN OUTLINE OF THE STATE OF FLORIDA (logo)

flamjcenter-logo

Classes 25, 44, 5: MEDICAL MAJIJUANA RECOMENDATIONS, MEDICAL FACILITY WITH A LICENSED M.D. ON STAFF, SALES OF CBD PRODUCTS. T-SHIRTS, CBD TINTURES, CBD TOPICAL

Registration Number: 18000000212
Registration Date: March 02, 2018
First Use Date: October 10, 2017

Author’s Note:  Yes, those goods & services misspellings are in the registration record.

 

I also decided to link to the registration paperwork in case anyone is interested in seeing how Florida’s paper-based system looks.

Two new cannabis-related Florida trademark registrations

Kevin Wimberly1 Comment

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!

Kevin Wimberly2 Comments

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

Kevin WimberlyLeave a comment

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

Kevin WimberlyLeave a comment

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

Kevin Wimberly1 Comment

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.

Florida inching closer to medical marijuana regulations

Kevin WimberlyLeave a comment

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

Kevin Wimberly1 Comment

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

Best Footnote in a Legal Opinion?

Kevin Wimberly1 Comment

FN6: The court imagines an appropriate reaction from SpongeBob SquarePants would be, “Aw, tartar sauce!” SpongeBob SquarePants, Hall Monitor (Nickelodeon television broadcast Aug. 28, 1999).

That footnote is from a Janury 11, 2017 opinion by Judge Gray H. Miller of the Southern District of Texas which granted partial summary judgment to Viacom in its lawsuit against the operator of a proposed restaurant named the “Krusty Krab,” which we all know is this:

krusty_krab

Source: http://spongebob.wikia.com/wiki/Krusty_Krab

A couple of takeaways:

  1. Notice that I said this was a “proposed” restaurant.  How did Viacom find out about it if it was not in operation yet?  Because the operator of the restaurant filed a trademark application for THE KRUSTY KRAB for use with restaurant services.  Companies routinely monitor the USPTO’s trademark application records (i.e. the Official Gazette) so that they can file oppositions to the applications before they mature into registrations.  Except in this case, Viacom chose not to oppose the application at the USPTO level and instead sued in federal court.  (Based on the trademark application timeline, Viacom may have inadvertently missed the window to oppose the application, and since it’s an intent-to-use application, Viacom would have had to wait until the application matured into a registration to then try and cancel it.  If that’s the case, Viacom could have been waiting for up to three years before the applicant filed a statement of use, which is what would then push the application to a registration.)  Procedure nerds might be wondering how the case was ripe for adjudication if the restaurant was not yet in business.  When there is imminent threat of infringement, a case may be ripe for injunctive relief, and that’s what happened here.
  2. Even fictional brands can be protected under trademark law because consumers will expect a connection between the fictional brand and the source of the movie or TV show that uses the fictional brand.  Such as the Simpsons-themed food and beverage at Universal Studios:

img_0096

Source: http://www.foodbeast.com/news/krusty-burger-and-moes-tavern-now-open-at-universal-studios-hollywood/

See also: Springfield Dining at Universal Orlando

Here is the FULL OPINION.