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

UPDATE 2: “College Football Playoff” trademark application loses Coach’s Challenge

We’ve blogged about the BCS’s intent to register the words “COLLEGE FOOTBALL PLAYOFF” for the BCS college football playoff HERE and HERE.

It doesn’t take a trademark attorney to figure out that the words COLLEGE FOOTBALL PLAYOFF are descriptive of a “college football playoff,” which the BCS describes as the following services: “Entertainment services in the nature of television and radio sports programs featuring college football games, exhibitions and tournaments; entertainment services, namely, organizing and staging college football games, exhibitions and tournaments; and providing entertainment, information, news and programming, polls, scores, standings, statistics, and history and background, all in the field of the sport of football, via the internet.”

The USPTO agreed, and refused to register the trademark.  As explained in the previous posts, trademarks that are “merely descriptive” of the goods or services are not registrable without a showing of acquired distinctiveness (or, secondary meaning).  It’s pretty hard to show that your trademark as acquired distinctiveness when it’s not even in use yet.  Nonetheless, the BCS threw out the red flag to challenge the refusal, but, on February 6, 2014, the USPTO said that the play on the field stands.

Well, that’s not entirely accurate, the USPTO is now saying that the mark is just flat out generic.  Generic terms can never be registered. Wilson cannot obtain a registration for FOOTBALL for footballs…  And, now, the BCS cannot receive a registration for COLLEGE FOOTBALL PLAYOFF no matter how much acquired distinctiveness it claims to have.  So, the BCS actually lost yards on the play.

From the USPTO’s most- recent Office Action:

Registration was initially refused under Trademark Act Section 2(e)(1) because the applied-for mark is merely descriptive of applicant’s services.  15 U.S.C. §1052(e)(1).  Applicant was also advised that the mark appears to be generic as well.  In response, applicant amended the application to add a claim of acquired distinctiveness under Section 2(f).  15 U.S.C. §1052(f).

Initially applicant was advised that the mark might be generic for only one of applicant’s services.  However upon further review, registration is now refused because the applied-for mark is generic for all of applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(c) et seq., 1209.02(a)(ii).  Thus, applicant’s claim of acquired distinctiveness under Section 2(f) is insufficient to overcome the refusal because no amount of purported proof that a generic term has acquired secondary meaning can transform that term into a registrable trademark or service mark.  See 15 U.S.C. §1052(f); In re Bongrain Int’l (Am.) Corp., 894 F.2d 1316, 1317 n.4, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990); H. Marvin Ginn Corp. v. Int’l Ass’nof Fire ChiefsInc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986); TMEP §1212.02(i).

Ouch.  I’d say the BCS needs to sit out for a “concussion assessment” over that one.

The BCS isn’t giving up so easily.  The strategy now appears to be based on registering the exciting logo below:

BCS CFP logo

Yeah, that “exciting” bit was sarcasm.

Actually, there has been an application pending for a different form of that logo since last year.  Not surprisingly, the USPTO is requiring the BCS to “disclaim” the generic wording, so the BCS will essentially be left with the beautiful black and gold logo as a registration, although I anticipate lots of over-reaching lawsuits when retailers begin using the term “College Football Playoff” in advertisements for TV’s, French onion dip, and recliners.

On a side-note, logos must be described in order to assist with searching for conflicting logos, so the USPTO will assign various tags to describe the logo.  Hilariously, the design code for the above logo is: “21.03.18 – Australian footballs; Rugby balls; Footballs; Elliptical shaped balls.”

Come on, Man!  This is America.  Wouldn’t “American football” have been enough?  Why bring rugby into this?

Finally, interested in what  the BCS wants to sell you with that logo on it?

IC 006. US 002 012 013 014 023 025 050. G & S: Metal key chains

IC 009. US 021 023 026 036 038. G & S: Video game software; digital media, namely, pre-recorded DVDs, downloadable audio and video recordings, and CDs featuring college football games, exhibitions and tournaments, and promoting the sport of football; downloadable software in the nature of a mobile application for providing entertainment, information, news and programming, polls, scores, standings, statistics, and history and background, all in the field of the sport of football

IC 014. US 002 027 028 050. G & S: Jewelry, watches, pendants, rings, medallions, collectible coins

IC 016. US 002 005 022 023 029 037 038 050. G & S: Printed publications in the form of game programs, media guides and commemorative books in the field of sports and entertainment; bumper stickers, decals and paper pennants

IC 018. US 001 002 003 022 041. G & S: Wallets, billfolds

IC 020. US 002 013 022 025 032 050. G & S: Plastic novelty license plates; vinyl flags

IC 021. US 002 013 023 029 030 033 040 050. G & S: Mugs and beverage glassware

IC 025. US 022 039. G & S: Men’s, women’s, and children’s clothing, namely, t-shirts, sweat shirts, sweat pants, caps, hats, pullovers, jerseys, and jackets, visors, shorts, socks, sweatbands, scarves, and sweaters

IC 027. US 019 020 037 042 050. G & S: Rugs

IC 028. US 022 023 038 050. G & S: Toy novelty items, namely, foam fingers and hands; sports equipment, namely, footballs and kicking tees; collectible toys, namely, full-sized replica football helmets and mini collector football helmets, collectible full-sized replica footballs

IC 041. US 100 101 107. G & S: Entertainment services in the nature of television and radio sports programs featuring college football games, exhibitions and tournaments; entertainment services, namely, organizing and staging college football games, exhibitions and tournaments; and providing entertainment, information, news and programming, polls, scores, standings, statistics, and history and background, all in the field of the sport of football, via the internet

Super-Bull – 2014 edition

I’m posting this year’s Super Bull post early because it seems that companies who are not official sponsors of “the Big Game”  (that’s the Super Bowl if you didn’t know) are getting an early start on publishing cute references to the Super Bowl.

I won’t re-hash the legal issues and ridiculousness of it all, you can find that on many other blogs, including this one:

https://floridaiptrends.com/2013/01/25/super-bull/

So, I’ll just present this year’s example, brought to you by my Dad, who received this e-mail from PayPal:

You really could name it if you wanted to...
You really could name it if you wanted to…

Ok, ha-ha.  But I wonder if companies are just having fun with the absurdity of it at this point.  Does PayPal honestly believe that it cannot use the Super Bowl mark descriptively?  When people run contests to win an Apple iPad, they don’t feel compelled to advertise it with, “Win a device made by a company that’s named after a fruit and makes a rectangular thing with a screen and buttons.”

Just make a conspicuous disclaimer that the contest isn’t endorsed, sponsored, approved, blessed, baptized, or otherwise supported by the NFL.  Then, let the catharsis begin – just call it the damn Super Bowl.  [CONSPICUOUS DISCLAIMER – that’s not legal advice.  If you do that, the NFL may sue you.]

Even the fine-print rules of the contest don’t call the prize for what it is – a trip to the Super Bowl:

Pssssst....  you win a trip to the Super Bowl.  That's what is happening on that day, time, and location.
Pssssst…. you win a trip to the Super Bowl. That’s what is happening on that day, time, and location.

And don’t even get me started on the NFL’s attempt to register “THE BIG GAME” as a trademark a few years ago.  It later abandoned the application, but in doing so it admitted that it was trying to prevent “ambush marketing” of the Super Bowl by using “The Big Game” instead.  With that logic, expect a trademark application for “The game we cannot name” to be in the works…  Intellectual property attorneys are usually safe from lawyer jokes, but not in this case.

National FirstAmendment Losers.

UPDATE: “College Football Playoff” Receives Initial Refusal from USPTO

Looks like I won’t have to eat my last Office Action.  The USPTO has issued a refusal to register “COLLEGE FOOTBALL PLAYOFF” as a trademark for “Entertainment services in the nature of television and radio sports programs featuring college football games, exhibitions and tournaments; entertainment services, namely, organizing and staging college football games, exhibitions and tournaments; and providing entertainment, information, news and programming, polls, scores, standings, statistics, and history and background, all in the field of the sport of football, via the internet.”  The Office Action was issued in July, but I only recently re-checked the docket.

The main basis for refusal was that the mark merely describes the services:

The applicant applied to register the mark ‘COLLEGE FOOTBALL PLAYOFF’ for “entertainment services in the nature of television and radio sports programs featuring college football games, exhibitions and tournaments; entertainment services, namely, organizing and staging college football games, exhibitions and tournaments; and providing entertainment, information, news and programming, polls, scores, standings, statistics, and history and background, all in the field of the sport of football, via the internet.”

Applicant’s mark is merely the combination of the three descriptive words ‘COLLEGE’, FOOTBALL’ and ‘PLAYOFF.’  A mark that merely combines descriptive words is not registrable if the individual components retain their descriptive meaning in relation to the goods and/or services and the combination results in a composite mark that is itself descriptive.  TMEP §1209.03(d); see, e.g., In re King Koil Licensing Co. Inc., 79 USPQ2d 1048 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of “beds, mattresses, box springs and pillows”); In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988) (holding GROUP SALES BOX OFFICE merely descriptive of theater ticket sales services).  Such a mark is registrable only if the composite creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services.  See, e.g., In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968).

In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous or nondescriptive meaning in relation to the goods and/or services.  Specifically, the wording ‘COLLEGE’ is defined as “an undergraduate division or school of a university offering courses and granting degrees in a particular field”, ‘FOOTBALL’ means “a game played by two teams of 11 players each on a rectangular, 100-yard-long field with goal lines and goal posts at either end, the object being to gain possession of the ball and advance it in running or passing plays across the opponent’s goal line or kick it through the air between the opponent’s goal posts” and ‘PLAYOFF’ means “a  series of games played to determine a championship.”  The combination of these three descriptive terms merely describe a series of college football games to determine a championship.  Applicant is providing entertainment services that will feature college football games that are played to determine a national championship.  The examining attorney has enclosed multiple news articles showing the term ‘COLLEGE FOOTBALL PLAYOFF’ used to describe games that will be played to determine the national champion of college football.  These articles use the term descriptively for a series of games to determine the national championship in college football.  Hence applicant’s mark is refused registration under Trademark Act Section 2(e)(1).

Not only was the mark deemed merely descriptive for the services, but the Examining Attorney also found that portions of the services were generic as to the mark:

In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the following services “entertainment services, namely, organizing and staging college football games, exhibitions and tournaments” and, therefore, incapable of functioning as a source-identifier for applicant’s services.

Read the full Office Action HERE.  The applicant (BCS Properties) has until January 16, 2014 to respond and try to argue against the refusal.  No doubt it will be a Hail Mary…

UPDATE: “College Football Playoff” seeking trademark registration

If the BCS’s application for “College Football Playoff” is approved by the USPTO for registration on the Principal Register, I’ll eat the last Office Action I received.

http://tsdr.uspto.gov/#caseNumber=85888738&caseType=SERIAL_NO&searchType=statusSearch

This isn’t even merely descriptive.  It’s generic.

 

See also:  https://floridaiptrends.com/2013/04/23/will-we-be-able-to-say-college-football-playoff-or-will-it-become-the-big-playoff/

Will we be able to say “College Football Playoff” or will it become “the Big Playoff?”

One of my favorite topics is how sports leagues try to censor descriptive uses of trademarks.  You’re all very familiar with the annual “Big Game” nonsense that is prompted by the NFL’s squad of IP linebackers.  If not, see THIS post.

Today, ESPN.com is reporting that the new college football playoff series will be branded as, drumroll……. the College Football Playoff.

I appreciate that the BCS executive director is quoted as saying that “It will not be cutesy. And it will be descriptive. I’ve seen too many people make mistakes by trying to be cutesy.”  Ok, as a trademark attorney, I tend to prefer “cutesy” (or arbitrary/fanciful) over “descriptive,” but I get it – the BCS wants something bold and descriptive.

But, any predictions on how long it will take the attorneys to start sending trademark cease and desist letters over people talking about the, uh, “College Football Playoff?”  I just can’t see how the IP maximalists that tend to infest the legal departments of sports leagues would green light this name unless they’re totally resigned to: a) just letting people use the “mark” descriptively without harassment, or b) sending threatening letters and trying to “educate” the public that “College Football Playoff” may not be used without the express written consent of….. blah blah blah.  My money is on the latter.