photo-1441015219334-4ab3ab01e5b3When we last left the Trademark Trial and Appeal Board (“TTAB,” an administrative arm of the U.S. Patent and Trademark Office), they had issued a precedential opinion that registrations could not be issued for marks that covered the sale and use of marijuana products or paraphernalia primarily intended or designed for use in ingesting or inhaling marijuana, even if legal in the state where the mark was used.  In re Morgan Brown, Ser. No. 86/362,968 (TTAB July 14, 2016) (see “Smoke Signals from Specimen of Use Support Registration Refusal for ‘Herb’ Sales Described in Applications,” ILN Blog 9/19/2016).  In a more recent precedential decision, the TTAB has now held that, despite the fact that marijuana is legal in 28 states and the District of Columbia for medicinal use and in eight states and the District of Columbia for recreational use, the federal Controlled Substances Act (“CSA”) prevents a mark owner from making lawful use of its mark in commerce when the goods or services in question are marijuana or equipment for marijuana use.  Without the ability to use a mark in lawful commerce, a trademark applicant therefore cannot have the required bona fide intent to use the mark in commerce or prove actual use in commerce.  In re JJ206, LLC, dba JuJu Joints, Ser. Nos. 86/474,701 and 86/236,122 (TTAB, October 27, 2016).  This is true regardless of whether the U.S. Department of Justice would ever prosecute the trademark applicant for violating the CSA.

JJ206, LLC applied to register POWERED BY JUJU for “smokeless cannabis vaporizing apparatus, namely, oral vaporizers for smoking purposes; vaporizing cannabis delivery device, namely, oral vaporizers for smoking purposes,” based on intent to use the mark in commerce.  Applicant also applied to register JUJU JOINTS for the same goods, based on actual use in commerce.  The applications were assigned to different examiners, both of whom refused registration.  The examiner for POWERED BY JUJU refused registration based on the lack of a bona fide intent to use the mark in lawful commerce.  The examiner for JUJU JOINTS refused registration based on lack of lawful use of the mark in commerce.  As § 907 of the Trademark Manual of Examining Procedure states, “if the mark or the identified goods or services are unlawful, actual lawful use in commerce is not possible…a refusal…is also appropriate for…non-use-based applications, because the applicant does not have a bona fide intent to lawfully use the mark in commerce.” Continue Reading


photo-1466921583968-f07aa80c526eIn the United States, a trademark can be refused registration on the Principal Register because the trademark is deemed merely descriptive.  If the trademark is not allowed for registration on the Principal Register, it may be eligible for registration on the Supplemental Register.  So, how do you determine if your mark is descriptive and which register should you seek registration?

The main register for most trademarks in the United States is what is called the “Principal Register”.  A trademark that is registered on the Principal Register has certain advantages including using the registration symbol ®, protection against registration of a confusingly similar mark (likelihood of confusion), presumed notice to the public of a claim of ownership of the mark, a legal presumption of ownership of the mark and the exclusive right to use the mark in commerce on or in connection with the goods/services listed in the registration, establishing a date of constructive use of the mark as of the filing date of the application, filing suit in federal court to bring an action concerning infringement, preventing importation of infringing foreign goods by filing the registration with the U.S. Customs and Border Protection, incontestability of the registration, and using the registration as a basis to obtain registration in foreign countries. Continue Reading

Food Fight and Road TRIPS!!!!!: Treaties And Product Names Getting Messy

photo-1464688934599-fc5108f8d1afTwo words, uttered in a certain tone and with a certain speed, are apt to suggest a bit of wastefulness, a touch of anarchy, and yet a sense of communal participation.  Those two words, from Faber College of lore to present discussions of law: Food Fight!!!!!.  And, we see the long smoldering discussions of geographical indications, or GIs, as part of the Transatlantic Trade and Investment Partnership negotiations are prompting some (such as the US Based Consortium for Common Food Names) to lay out just what might be at stake in this food fight.  Though such groups are concerned that the Transatlantic Trade and Investment Partnership could provide legal ammunition for foreign manufacturers to up end American markets, those same groups overlook the fact that such legal ammunition may already exist. Continue Reading


photo-1439902708487-91bcf15ceb27In a precedential opinion, the Trademark Trial and Appeal Board (“TTAB,” an administrative arm of the U.S. Patent and Trademark Office) affirmed the trademark examiner’s refusal to register HERBAL ACCESS for retail store services featuring “herbs.”  Although the application did not mention marijuana as one of the “herbs” being sold, applicant Morgan Brown’s specimen of use and web site home page contained enough evidence for the examiner to determine that he was indeed selling the federally banned substance.  In re Morgan Brown, Ser. No. 86/362,968 (TTAB July 14, 2016).

Brown does business in the State of Washington, where state law permits adults to possess one ounce of usable marijuana, 16 ounces of marijuana-infused product in solid form, and 72 ounces of marijuana-infused product in liquid form.   However, federal law still bans under the Controlled Substances Act (“CSA”) the sale and use of marijuana and “paraphernalia” primarily intended or designed for use in ingesting or inhaling it.  Continue Reading

Trader Joe’s trying to make Pirate Joe’s “walk the plank” in U.S. trade-mark case

pirates-1440445_1920In the ongoing dispute between Michael Hallatt, a Vancouver businessman, and U.S. based retailer Trader Joe’s, the United States Court of Appeals for the Ninth Circuit (the “Ninth Circuit”) has overruled the 2013 decision of the U.S. District Court for the Western District of Washington (the “District Court”) not to hear Trader Joe’s claim against Hallatt for, among other things, trade-mark infringement, dilution, unfair competition and false advertising.

The dispute arose out of Hallatt’s purchase of products from Trader Joe’s stores in the U.S., particularly in the state of Washington, for resale in Canada (there are no Trader Joe’s stores in Canada).  Hallatt has and continues to mark up and re-sell Trader Joe’s products at his store in Vancouver, named Pirate Joe’s. Continue Reading

Provisional applications and licensing of unregistered patents may appear in Russia

photo-1464963160608-a6834f70b421In August 2016 Rospatent has initiated a public discussion on provisional applications and licensing of unregistered patents in Russia.

In Rospatent’s view, provisional applications are designed to establish an effective 12-month term, within which applicants may file their non-provisional (“ordinary”) applications. In order to register a provisional application an applicant should disclose a technical decision of the invention or utility model and pay a patent fee.

Along with above mentioned, Rospatent proposed to introduce licensing of unregistered patents in Russian Civil Code (currently licensing of technical decisions of unregistered patents is not prohibited). Continue Reading

Second Circuit Narrows ‘Red Flag Knowledge’ Exception to DMCA’s Safe Harbor Protections for ISPs

A photo by Jeff Sheldon. a long-standing case brought against the video platform Vimeo by several music publishers, the U.S. Court of Appeals for the Second Circuit recently set the bar high for copyright owners to succeed in their infringement claims against service providers based on allegations of “red flag knowledge.”

The Second Circuit, shedding some light on what is needed to establish red flag knowledge, rejected the publishers’ argument that Vimeo was not entitled to the Digital Millennium Copyright Act’s (DMCA) “safe harbor” protections for numerous videos on Vimeo’s platform that included their copyrighted music because the facts and circumstances made the infringements apparent. Continue Reading


A photo by Daniel Robert. Danish court has recently decided that a party may be too large to be considered private, at least when it comes to the understanding of the wording “Public performance” in Danish copyright law. The court therefore ruled that the staff party held by Novo Nordisk should be considered as public in connection to the Danish Copyright Act, and therefore Novo should pay Koda for the use of musical work and text.  

Danish copyright law implements a range of EU directives, including directive 93/98/EEC concerning harmonizing the term of protection of copyright and certain related rights, and directive 92/100/EEC on rental rights and lending rights and on certain rights related to copyright in the field of intellectual property.  Continue Reading

What’s Your Evidence? The Danger of Hearsay Evidence in IP Litigation

iStock_000011931148XSmallIn Pfizer Canada Inc. v. Teva Canada Limited, 2016 FCA 161, the Federal Court of Appeal (“FCA”) recently overturned a substantial damages award in a pharmaceutical patented medicines action on the basis that the trial judge admitted improper hearsay evidence. This is an important reminder that the hearsay rule of evidence is alive and well.

At trial, only one witness was called to testify in support of damages and he did not have actual firsthand knowledge of the purported facts to which he was testifying. Instead the witness could only testify to the oral and written statements of others.  The FCA ruled that this evidence was hearsay, and therefore inadmissible.

Hearsay evidence is an oral or written statement made by a party who has not come to court to testify. An example of oral hearsay is a witness testifying that “John told me he would give me $100”. This is hearsay because the author or speaker of these statements is not present in court to testify to the truth of the statement. Whether or not the statement is admissible depends on the use of that statement. If the purpose of calling the hearsay evidence is to prove the truth of the statement, then the statement is inadmissible. Therefore, in this example, the proper way to prove that John would give the witness $100 is to call John as a witness to testify to the truth of that statement; otherwise, the statement cannot be used to prove that John would have given the witness any money. Continue Reading

Why Register Your Copyright?

iStock_000003908491_LargeSuppose that you have expressed your idea into a tangible form such as producing a video.  Although your copyright exists upon the moment of creation, should you register your copyright on the video with the U.S. Copyright Office?  Suppose you don’t and later you find out that a competitor has posted a copy of your video on their website.  Should you register your copyright?  The answer is YES!

Let’s suppose you have created a video such as how to design a particular product.  The video has value because it draws interested persons to your website.  However, you did not register your copyright in the video with the U.S. Copyright Office before posting it on your website.  Now, six months has passed and a competitor has obtained a copy of your video and has posted it on its website to draw traffic from your website to their website.  What can you do to prevent this situation from continuing?

First, you need to register your copyright on the video with the U.S. Copyright Office before you can sue for infringement.  Under 17 U.S.C. § 411, no civil action for infringement of a copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made. Continue Reading