I’ve got some clients who are interested in protecting their (legal) marijuana trademarks: both medical and recreational.
Since they’re interested, I’m interested.
And, besides, I think it’s just plain interesting. Illegal on the federal level. Legal in some states for medical uses. Legal in Washington and Colorado for recreational uses. Illegal at airports. Illegal across state lines. It’s a legal mess, all right. But we’ll help sort it out this week at the King County Bar Association Intellectual Property Law Section’s monthly brown bag lunch. March 6, noon to 1. Members can attend live or stream on their computer. Information on the IP Law Section here.
The nickel version of my thoughts: marijuana trademarks are like all other trademarks, except for the “lawful use” requirement at the federal level. In short, you can’t register marks for marijuana-oriented goods or services with the U.S. Patent and Trademark Office, because those uses aren’t legal. So you should register “clean” versions of your client’s goods and services at the federal level, and the marijuana uses where legal at the state level. Just don’t get too cute with the PTO (like “MARYJANE HEMP FOODS” for food supplements) or the PTO will require you to answer some pretty direct questions about whether your client’s goods contain marijuana.
My slides are viewable here.
Bring your questions, best practices, and best guess at what the law will look like in five years.
I’ve had a few clients recently who regretted waiting to apply to register their trademarks.
This isn’t about scaring anyone. Waiting a while often doesn’t have a downside. Indeed, deciding not to register a trademark at all might be the right thing to do.
But sometimes waiting gives someone else the chance to file an application for federal registration first. That means they get in line ahead of you. If the PTO grants their application — and their mark is confusingly similar with yours — their registration would block yours. It would not matter that you started using your mark first and have superior trademark rights. And when their registration issues, you could be locked into the geographic area in which you made sales before they applied for their registration.
Depending on the situation, that may not be the end of the world. But for some trademark owners, that would be unacceptable. If so, they would need to clear out the blocking application or registration. Unfortunately, that process can be time-consuming and expensive. If the PTO’s 30-day opposition period hasn’t passed, they can start an opposition proceeding. If it’s too late for that, or if the registration has already issued, they can start a cancellation proceeding. A party can win either of those proceedings if it can show it used its mark first and the applicant’s or registrant’s mark is likely to cause confusion with its mark.
In such cases, winning is not the problem. The problem is those proceedings can take a long time and can cost a lot of money — a problem that would not have existed if the party with superior trademark rights had simply filed its application for registration first.
No need to call it the “Big Game.”
If you’re having people over to watch the Super Bowl, feel free to say you’re having a Super Bowl party.
There’s much in the news about NFL’s heavy-handed trademark enforcement. They’re bullies. But pressuring people to make up silly code names for the Super Bowl to avoid using its trademark has no basis in the law, at least not in the Ninth Circuit.
Others may differ (not counting the NFL, who I’m sure will differ). But in the Ninth Circuit, as long as you don’t imply some sort of sponsorship or connection with the trademark owner, you can use a trademark without the owner’s permission in order to refer to the trademark owner. It’s a form of a fair use known as “nominative” fair use. In my opinion, that applies to the Super Bowl trademark.
The Ninth Circuit described the elements of the nominative fair use test as follows:
“First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark owner.”
Here, there’s no non-awkward way to refer to the Super Bowl without saying “Super Bowl.” (I don’t count “Big Game” as being non-awkward.) Therefore, speakers can have at it, as long as they don’t use logos or other trappings that would make someone think your Super Bowl party is actually sponsored by the NFL. (Now that would be a party!)
This is just like Terri Welles truthfully describing herself a former Playboy Playmate of the Year without Playboy’s permission. When Playboy sued, the Ninth Circuit said she had every right to use those trademarks because:
“[T]here is no other way that Ms. Welles can identify or describe herself and her services without venturing into absurd descriptive phrases. To describe herself as the ‘nude model selected by Mr. Hefner’s magazine as its number-one prototypical woman of the year 1981’ would be impractical as well as ineffectual in identifying Terri Welles to the public.”
As far as I’m concerned, the same is true for “Big Game.”
Just say Super Bowl. No one will be confused.
P.S. Samsung had great fun with the NFL’s overbearing trademark enforcement during last year’s Super Bowl. It was the best commercial shown because it showed how comically absurd the NFL’s enforcement practices really are.
As previously discussed (here), I believe that state trademark registrations have their place in forming a smart trademark protection strategy.
Here’s another reason why they can be useful: enforcing your rights with online portals like Amazon, eBay, and Google. Generally, these providers only act on complaints about counterfeiting or trademark infringement if the complaining party can establish its superior rights by supplying a registration number. At least with Amazon (with whom I’ve recently dealt), this includes state trademark registrations.
Assuming state registrations continue to do the trick (and are similarly acted on by eBay, Google, and other providers), they can be an attractive option for a trademark owner if its goal is to stop online infringement. They’re quick (in Washington, you can get a registration certificate within a week or two), they’re cheap ($105 in filing fees in Washington, including expedited processing), and they’re almost automatically granted.
If you want to maximize your trademark rights, it’s no substitute for a federal registration. But if you only do business locally, or want a quick credential to leverage with online providers, a state registration can be an option to consider.
What’s a trademark owner to do if the PTO denies an application for federal trademark registration because it finds the mark is “merely descriptive”?
A mark is merely descrptive under U.S. trademark law if it immediately conveys information about the good or service being sold in connection with the mark. In such cases, the mark does not function as a trademark because it only tells consumers about what’s being sold, rather than who is selling it. The latter message is what a trademark needs to convey.
That means descriptive brand names like SPEEDY AUTO GLASS and SEATTLE’S BEST COFFEE are not registrable on the PTO’s Principal Register — that is, until they achieve “secondary meaning.” Secondary meaning occurs when the mark has become linked in consumers’ minds with the trademark owner, rather than the trademark owner’s goods. In other words, the primary, descriptive message has been subverted by the secondary meaning that identifies the source of the goods or services.
Proving secondary meaning is what’s needed to overcome the PTO’s objection. This is first shown through longstanding use. The statute sets the usual minimum benchmark at five years, but the PTO often requires more evidence of secondary meaning than that. Even ten or fifteen years’ use may not be enough.
So what else proves secondary meaning? Evidence of what one might expect to indicate that consumers have come to associate the brand with the owner: dollar sales under the mark, advertising figures, samples of advertising, and consumer or dealer statements that the mark is recognized as referring to the trademark owner. Generally, the most persuasive evidence shows the owner’s longstanding use of the mark, lots of money spent on advertising, and lots of sales made. This includes evidence of advertising on TV, radio, in print, on the web, and any other evidence that shows that consumers understand descriptive marks like SPEEDY AUTO GLASS and SEATTLE’S BEST COFFEE point to a specific source, rather than a description of goods or services.
If an owner doesn’t have this evidence, or the PTO finds the offered evidence isn’t enough, the owner can still obtain registration by amending its application for registration on the Supplemental Register. Doing so loses the benefits of registration on the Principal Register — including the presumption that the owner is the exclusive nationwide user of the mark in connection with the specified goods or services — but it still entitles the owner to use the Circle-R symbol that indicates its mark is registered. It’s not a result an applicant generally hopes for, but it is better than nothing.