Intellectual Property & Competition Law

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News from TRAILBLAZER about trademark, trade dress, trade secret, copyright, false advertising and unfair competition, and right of publicity law.

#Hemp related Federal #Trademark Registrations are Now Possible (not guaranteed)

Until recently, federal registration with the United States Patent and Trademark Office (USPTO) of trademarks connected with the offering of #cannabis or cannabis-derived goods—or service marks connected with services involving cannabis or cannabis production—was a legal impossibility.  An application for such goods or services was futile due to the illegal use in commerce doctrine, which refers to the fact that use of a trademark or service mark must be lawful under federal law in order to be the basis for federal registration of that mark.  If the goods or services with which the mark is used do not comply with applicable federal laws, then the applicant’s use of the mark cannot create rights that a federal registration would recognize.  Because the USPTO is a federal agency, within the U.S. Department of Commerce, the fact that the goods or services may be lawful under one or more state laws is irrelevant. 

However, the 2018 Farm Bill—which was signed into law on December 20, 2018 as the Agriculture Improvement Act of 2018—has helped to open up a narrow path toward obtaining a federal registration for trademarks and/or service marks used in connection with hemp or hemp-derived goods and services involving hemp or hemp production.  It has done so by removing “hemp” from the definition of marijuana within the Controlled Substances Act (CSA), 21 U.S.C. §§ 801, et seq. (the “CSA”).  The term “hemp” is, per the Act, defined to mean: “the plant Cannabis sativa L. and any part of that plant, including the seeds thereof and all derivatives, extracts, cannabinoids, isomers, acids, salts, and salts of isomers, whether growing or not, with a delta-9 tetrahydorcannabinol concentration of not more than 0.3 percent on a dry weight basis.” AMA, Section 297A (as amended).  As a result, cannabis plants and derivatives such as cannabidiol (commonly referred to as “CBD”) that contain no more than 0.30% THC on a dry-weight basis are no longer deemed to be controlled substances under the CSA.

Consequently, for any trademark applications filed with the USPTO on or after the effective date of the 2018 Farm Bill (i.e., December 20, 2018), that identify goods encompassing cannabis or CBD, the marks are potentially registrable if the goods are derived from hemp and the application specifies that the goods contain less than 0.3% THC.  Notably, however, not all types of hemp-derived goods or services are lawful as a result of the 2018 Farm Bill.  This is because the 2018 Farm Bill expressly preserved the U.S. Food and Drug Administration’s (FDA’s) authority to regulate products containing cannabis or cannabis-derived compounds under the Federal Food Drug and Cosmetic Act (FDCA). Therefore, an application to register marks for goods such as food, beverages, dietary supplements and/or pet treats that contain cannabis or CBD will still be refused as unlawful—even if derived from hemp.   

If the application seeks to register a mark for services that involve the cultivation or production of hemp, the examining attorney will inquire as to the applicant’s authorization to produce hemp.  Thus, applicants will be required to confirm, through statements for the record, that their activities comply with the requirements of the 2018 Farm Bill regarding hemp production, including the requirement of a license or authorization issued by a state, territory or tribal government in accordance with a plan approved by the U.S. Department of Agriculture (USDA) for the commercial production of hemp.

Should it be that your trademark or service mark is not eligible for federal registration, the prospect of registering your mark with states wherein your goods and/or services are lawful should not be overlooked.

If this seems complex, TRAILBLAZER would be pleased to help you. Should you desire assistance with respect to any trademarks or service marks, please do not hesitate to contact us at 305-222-7851.

U.S. Seeks #Forfeiture of #Infringing #Barbies Nabbed at #Border

This is one example of what recording intellectual property rights with the U.S. Customs and Border Protection can accomplish. 

On April 25, 2019, the U.S. Attorney’s Office for the District of Minnesota announced the filing of a civil forfeiture complaint against Greenbrier International Inc., which does business as Dollar Tree.  The complaint seeks the forfeiture of 21,852 dolls that allegedly infringe a registered copyright owned by Mattel, Inc., which protects its CEO Barbie doll head. 

Mattel had recorded its copyright registration with the US CBP and, as a result thereof, border officers examining a container traveling by rail across the border at International Falls, Minnesota were able to spot and take action against the allegedly infringing dolls in the shipment vaguely marked as “Other Toys” on the manifest.  Upon receiving information regarding the shipment, Mattel reviewed photos of the dolls and identified several features, including the shape of the mouth, jaw and nose that infringed its registered copyright for the CEO Barbie doll head. 

Per the complaint, this is not Dollar Tree’s first attempt to get allegedly infringing dolls across the border.  In 2016, 13,296 mermaid fashion dolls were also seized at the border by CBP for also infringing Mattel’s CEO Barbie doll head copyright. 

Per CBP statistics, in fiscal year 2017, it made 34,143 seizures of goods having an approximate retail value of $1,206,382,219, which arrived by air, land, sea and, as with the infringing dolls described above, by rail.  Notably, toys, amount to only about 1% of all seizures.  Apparel and accessories occupy the top slot in the seizure statistics, amounting to approximately 15% of seizures.  Watches and jewelry are next in line, amounting to approximately 13% of seizures.  What should be a bit scary for anyone who depends on medication is that approximately 6% of seizures are of pharmaceuticals and personal care items. 

Intellectual Property Rights are one of the priority trade issues for the U.S. CBP.  In pursuing that priority, CBP enforces against:

Confusingly Similars: items likely to cause confusion or mistake, or to deceive as to affiliation, connection, or association of such person with another person, or as to origin, sponsorship or approval of his/her gds, svcs, or comm’l activities;  

Counterfeits: a spurious (false/non-genuine) mark that is identical with, or substantially indistinguishable from, a registered mark; and  

Gray Market Goods: a/k/a parallel imports, diverted goods. Articles bearing TM initially applied w/ approval of tm-holder w/ intent of sale in country other than U.S. but good was diverted to U.S. w/o approval of tm-holder. 

  If you would like further information and assistance with recording your intellectual property rights with U.S. Customs and Border Protection, please do not hesitate to contact us at 305-222-7851.

Did You Know That: Unpublished Works May Registered in Groups of up to 10?

Recently, the U.S. Copyright Office updated its rules to establish a new group registration option for certain types of unpublished works and, thereby replaced the previous accommodation for unpublished collections. The new rule is aimed at benefiting individual creators or small businesses who otherwise might not register their works separately through the more expensive standard registration application.  

  Generally, a group of up to ten unpublished works may be registered in the following administrative classes using a single form: literary, visual arts, performing arts, and sound recordings. However, to be eligible to do so, they must be several requirements, including but not limited that they must: all fall within the same administrative class; not include compilations, databases, collective works or websites; be created by the same author(s); and have the same claimant information. However, there is a limited exception which allows applicants to include up to ten sound recordings together with the musical, dramatic or literary work embodied within each recording.

  Publication is a statutorily defined term, and applicants are responsible for determining whether their works fall within that term or are outside that definition and, thus, are properly considered “unpublished.”  Additionally, it should be noted that this new rule does not limit or replace the quantitatively more liberal rule for photographers by which up to 750 photographs can be included within a group registration application. 

If you would like further information as to group registration of photographs or need assistance with other types of copyright registration and/or enforcing your copyrights, please do not hesitate to call upon us.

Did You Know That: Photographers May Register Up to 750 Photographs as a Group?

Slightly over a year ago, the U.S. Copyright Office updated its rules to improve the efficiency of its group registration of photographs and, thereby, modified its procedure as to published photographs and added a similar group registration procedure for unpublished photographs. There is no mixing-and-matching within groups; each group must be comprised of either published or unpublished photographs.  To be eligible to register a group of unpublished photographs, there are several substantive and technical requirements including—but not limited to—all the photographs must be: unpublished; created by the same author; and provided in digital format. Additionally, the same claimant must be set forth as the holder of the rights. Similar parameters apply to registering a group of published photographs, except that all photographs in the group must be published and within the same calendar year. 

The group as a whole is not deemed a compilation or collective work.  Instead, each photograph is registered as a separate work. Thus, a separate statutory damages award is available for each photograph.  

If you would like further information as to group registration of photographs or need assistance with other types of copyright registration and/or enforcing your copyrights, please do not hesitate to call upon us.

EU and US Copyright Law Diverge: EU Shifts Burden to Police For Copyright Infringement from Rights Holders to Online Platforms for User-Uploaded Content

  Amendments to the EU’s Copyright Directive’s Article 17, which require certain online platforms for user-uploaded content to conclude licensing agreements with the rights holders for the use of the copyright protected content, have been granted final approval by the European Council and, thus, are being sent to the EU’s member states for implementation into law within the following twenty-four months. 

  If an online platform does not obtain a license from the rights holder, the new rules will require it to make their best efforts to prevent unauthorized content from becoming available on its website.  While that “best efforts” obligation does not prescribe a particular type of technology for doing so, many critics have dubbed Article 17 as the “upload filter” amendment. 

  One of the main objectives of the amendment is to reinforce the negotiating position of creators and rights holders with respect to obtaining remuneration for use of their works by user-uploaded content platforms in the online environment, and to provide transparency rules with respect to the remuneration of authors and performers.  However, critics from the tech and social media industries complain that this shifting of the burden of policing for copyright infringement from the rights holder to the online platforms places too heavy a burden upon them. On the other hand, rights holders view it as relieving them from having to play an unending game of whack-a-mole through a notice and takedown procedure. Although, there are some exceptions. For example, content generated by users for the purpose of criticism, caricature, quotation and review, parody and pastiche (e.g., memes and gifs) must be permitted by all member states.

  This shift in the EU copyright law represents a dramatic departure from what was a fairly consistent scheme of treatment between the U.S. and EU.  In the U.S., pursuant to the Digital Millenium Copyright Act, the lion’s share of the burden will remain on the rights holders to identify the alleged infringers and, for each, follow a notice and takedown procedure.  In other words, rights holders in the U.S. will continue to play whack-a-mole in an effort to police and enforce their copyrights. 

  The new EU Rules also have implications with respect: out-of-commerce works; copies of works that have fallen into the public domain; and collective licensing. For the European Commission’s answers to frequently asked questions about the new rules see: http://europa.eu/rapid/press-release_MEMO-19-1849_en.htm.  You may also be interested in the EU Commission’s general overview of the new EU rules, at: https://ec.europa.eu/digital-single-market/sites/digital-agenda/files/newsroom/full_fact_43353.jpg

  As a U.S. law firm, TRAILBLAZER does not practice, or give advice as to, European Union law.  However, if you would like us to facilitate an introduction to European lawyer we would be happy to assist you.  Further, if you have questions or need assistance about the U.S. copyright laws and the Digital Millenium Copyright Act which governs the U.S. notice and takedown procedure, please do not hesitate to call upon us.

Susan Latham to Attend INTA 2019 in Boston

The International Trademark Association is hosting its Annual Meeting from May 18 to May 22, 2019 in Boston, Massachusetts, which will bring together intellectual property professionals from around the world to attend educational seminars and enjoy extensive networking opportunities. If you are a colleague who is also attending INTA and would like to meet, please do not hesitate to contact Ms. Latham at slatham@trailblazerlaw.com with proposed times.

Susan Latham
Jeffrey Feldman to Address the Bench & Bar Conference on March 1st

On March 1, 2019 at 10:00 am, Trailblazer co-founder, Jeffrey D. Feldman, will address the Bench and Bar Conference of the American Inn’s of Court  at the Hyatt Regency Hotel in downtown Miami. Feldman will discuss the enforcement of trade secrets under the Uniform Trade Secrets and Defend Trade Secrets Acts. Feldman, a Board Certified Intellectual Property Lawyer, is one of five intellectual property lawyers invited to speak at the conference on issues of intellectual property law and litigation.

Susan LathamTRAILBLAZER
Our Launch!

While our team is not new, our firm is.  We look forward to serving clients we have had the pleasure of working with throughout our careers and to welcoming new ones.  Stay tuned to this space from time to time for news about TRAILBLAZER and any interesting legal developments that our trailblazing clients may find interesting.  

Susan Latham