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Guest Blog: Hemp-Derived CBD As an Ingredient: What gives?

By: Tami Wahl, Policy Advisor in Washington, D.C. The 2018 U.S. Farm Bill was momentous and launched a new domestic hemp production industry designed to invigorate the farming community. Just as the celebratory parade was about to start, the U.S. Food and Drug Administration (FDA) took a position, namely prohibiting hemp-derived cannabidiol (CBD) as in ingredient in food and ingestible products, which arguably, compromises the success of the launch by restricting full access to mature end markets. The FDA’s position has created great market uncertainties, and now, a year+ later the U.S. hemp industry is still being stifled by the same federal agency. Enter HR5587– a bi-partisan bill that was introduced this past January to calm the market chaos and provide certainty to all stakeholders. By way of background, the hemp plant has many uses such as fiber, textile, food and extraction of select cannabinoids. One of the primary cannabinoids currently in demand by consumers is CBD. However, as stated above, domestic hemp producers have restricted access to the food and dietary supplement industries as end markets because FDA has taken the internal position that CBD is an illegal ingredient based on the drug exclusion rule. The drug exclusion rule prohibits any substance to be used as an ingredient in foods or dietary supplements that has been approved as a new drug or has been subject to a publicized Investigational New Drug clinical investigation, unless the substance was marketed as a food or dietary supplement before the FDA approved it as a new drug or began the clinical investigation. The FDA contends that CBD was first publicized in the...

BREXIT Update: EU Trademark Applications & Registrations

BREXIT was finally implemented on January 31, 2020. What does this mean for your European Union (“EU”) trademark applications or registrations? Issued EU Registrations Will Automatically “Spawn” Parallel UK Registrations Good news! For EU trademark registrations granted by December 31, 2020, a parallel UK registration will automatically “spawn,” carrying over all the original information from the EU registration as well as the relevant filing, seniority, and priority dates to the newly issued UK registration. While the transition process has not yet been fully ironed-out, significantly, there will be no fees imposed for the conversion. Significantly, the UK government has recently confirmed that use in the remaining 27 EU countries within the five years before December 31, 2020 exit date, which would have supported the validity of an EU registration, will also support the validity of the spawned UK registration — even if the mark has never been used in the UK. However, if use continues only in the EU, with no actual use commencing in the UK, the spawned UK registration will become vulnerable to non-use revocation in 5 years, by December 31, 2025, because the EU use will be considered too distant and will no longer be relevant with respect to the spawned UK registration. We note that the examination process for EU trademark applications is relatively expeditiously (in part because the EU Intellectual Property Office (“EUIPO”) does not issue refusals based on likelihood of confusion, e.g., “relative rights”) in as little as 5 months from the date of filing to the date of registration (that is, if there are no Office actions or oppositions filed). So, there...

Conceptual v. Commercial Trademark Strength

The “strength” of a trademark relates to how likely a mark is to be remembered and associated in the public’s mind with the mark owner. The stronger a trademark, the greater protection it is accorded by trademark law. Conceptual Strength Conceptual trademark strength refers to the level of inherent distinctiveness of a mark. A mark can be inherently distinctive. (Alternatively, a mark may acquire distinctiveness through extensive and continuous use in the market.) During examination of a new application, the United States Patent and Trademark Office assess the conceptual strength of an applied-for mark to determine whether the mark is registrable. Being limited to the four corners of the application, the Office cannot consider commercial strength, unless the evidence is being presented in connection with a claim of secondary meaning. There are 3 types of inherently distinctive marks, discussed below in order of descending conceptual strength: – Fanciful marks are not actual words, but made-up terms, like ACCENTURE for consulting, EXXON for energy products, STARBUCKS for coffee, PINTEREST for social networking, and LEAFLY for cannabis news source and directory. Fanciful marks are the strongest type of mark because the commercial meaning is solely derived from the use by the trademark owner. – Arbitrary marks are real words, but words that have no literal, or even a suggestive, meaning in connection with the product. Examples include LEAPFROG for educational games, APPLE for computer products, AXE for men’s toiletries, JACK IN THE BOX for fast food, DAWN for cleaning products, and VOLCANO for a vaporizer. – Suggestive marks allude to and only indirectly relate to the product. Examples of suggestive marks...

Principal vs. Supplemental Trademark Register

In our recent blog post, we discussed important characteristics of marks to be considered during the selection process. The selection of a distinctive mark is key to being able to successfully enforce rights in a brand name, and also has implications for registration. In the U.S., unlike most other countries, there are two Trademark Registries: the Principal and the Supplemental. The Principal Register is the primary trademark register maintained by the United States Patent and Trademark Office and is reserved for marks that are inherently distinctive, either fanciful, arbitrary, or suggestive, or for merely descriptive marks that have acquired distinctiveness through extensive continuous and exclusive use in the marketplace. If an applied-for mark is considered merely descriptive by the USPTO and use in commerce has commenced, an applicant has the option to register on the Supplemental Register. However, registration on the Supplemental Register is an admission that the mark is weak, and, thus, not entitled to a strong scope of protection. Having a mark registered on the Principal Register confers certain benefits, including: Use of the ® symbolAbility to bring a trademark infringement suit in federal court Nationwide constructive use and constructive notice, which cuts off rights of other users for similar marks. Meaning, all others are presumed to know about the ownership claim once the mark is registered.Prima facie evidence of the validity of the mark. While not all marks are created equal, registration indicates that a mark has at least a presumption of distinctiveness and exclusivity. Nationwide priority as of the date of application, rather than the registration date.Registrant’s exclusive right to use the mark in connection...

Distinctive & Exclusive

Below we discuss two significant legal factors that make for a strong trademark: distinctiveness and exclusiveness. 1. DISTINCTIVENESS A mark can be inherently distinctive or it may become distinctive through extensive and continuous use in the market. There are three types of inherently distinctive marks: – Fanciful marks are not actual words, but made-up terms, like ACCENTURE for consulting, EXXON for energy products, STARBUCKS for coffee, PINTEREST for social networking, and LEAFLY for cannabis news source and directory. – Arbitrary marks are real words, but words that have no literal or suggestive meaning connected to the product. Examples include LEAPFROG for educational games, APPLE for computer products, AXE for men’s toiletries, JACK IN THE BOX for fast food, DAWN for cleaning products, and VOLCANO for a vaporizer. – Suggestive marks allude to and indirectly, extrinsically relate to the product. Examples of suggestive marks are CHICKEN OF THE SEA for tuna, DREAM HOTEL for hotels, PEDIGREE for pet food, PRUDENTIAL for insurance services, GREEN BRANCH for banking services, COPPERTONE for sunblock, and SUBLIME for cannabis products. If a mark falls into one of these three categories, it is inherently distinctive and you are off to a good start in developing a strong mark. On the other hand, merely descriptive and geographically descriptive marks are weak marks (legally). Under trademark law, a mark is considered “merely descriptive” if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the relevant goods or services. Merely descriptive marks, e.g., Little Tavern for a restaurant, Bagel Bites for bite sized bagel snacks, which immediately communicate about even a single feature or attribute...