Author Archives: Amber L. Reiner

Hemp And Hemp Derived-CBD Trademarks Will Now Be Accepted By USPTO

ByAmber Reiner Skovdal associate at Houston Harbaugh  

On May 2, 2019, the United States Patent and Trademark Office issued an examination guide in an effort to clarify the procedure for examining marks for cannabis and cannabis-derived goods and related services following the 2018 Farm Bill.

The 2018 Farm Bill, formally known as the Agricultural Improvement Act of 2018, removed industrial hemp from the Controlled Substances Act’s definition of marijuana and permits the cultivation of industrial hemp (with the requisite permits and licenses) so long as such plants contain no more than 0.3% delta-9 tetrahydrocannabinol (“THC”) concentration on a dry weight basis. This means that hemp and hemp-derived cannabidiol (CBD) products are no longer controlled substances under the CSA. However, among other restrictions, the 2018 Farm Bill expressly preserved the Food and Drug Administration’s (“FDA”) authority to regulate and provide guidelines for the use of cannabis and cannabis-derived (i.e., CBD) products in food and dietary supplements under the Food Drug and Cosmetic Act (“FDCA”). Under the FDCA, it remains unlawful to use CBD in foods or dietary supplements without approval from the FDA because CBD is an active ingredient in FDA-approved drugs and is undergoing clinical investigations.

In light of the intersections between the CSA, the Farm Bill (AIA), and the FDCA, the USPTO’s examination guide is a welcomed bit of clarification on how the office will proceed with what we understand to be a backlog of cannabis-related trademark applications.

Historically, the USPTO has rejected applications for registration of cannabis or cannabis derived-CBD goods and services, including both marijuana and hemp. Now that hemp has been removed from the CSA, the USPTO will begin accepting hemp-related marks. For applications filed on or after December 20, 2018, the application must specify that the goods identified contain less than .3% THC on a dry weight basis. Similarly, for service-related marks, the application must specify that services involve hemp containing .3% or less THC. For applications filed before December 20, 2018, applicants will be permitted to either amend the filing date or abandon the application and file a new application.

Given that marijuana and its derivatives are still controlled substances, any applications for marks for marijuana or marijuana derived-CBD goods or services involving marijuana-related activities will continue to be rejected as unlawful under federal law. This includes marks used in commerce in states which have legalized medical and adult-use marijuana. Further, even if your desired mark is hemp-related, it may still be rejected by the USPTO, if the related goods violate the FDCA.

As with many areas related to this industry, protecting your intellectual property continues to be a complex and evolving process.

Amber L. Reiner Skovdal has handled diverse matters involving complex commercial and business litigation, insurance and bad faith, products liability defense, employment disputes, and intellectual property litigation including trade secret disputes as well as patent and trademark infringement litigation. She can be reached at reineral@hh-law.com or 412-288-4016

Play-Doh is Sniffing its Way to Scent Marks

By: Amber Reiner Skovdal associate at Houston Harbaugh  playdoh

When someone mentions Play-Doh, what is the first thing you think of? Is it those flexible yellow containers? Perhaps it is the smooth and squishy texture of the putty? More likely though, you are probably thinking, nay, smelling, Play-Doh’s unmistakable scent. Play-Doh describes its scent best as “the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of salted, wheat-based dough.” If you still can’t imagine its scent, put down your device, go find the closest toy store and pop open a tub of Play-Doh. We’ll wait.

In short, Play-Doh arguably has one of the most recognizable scents and n
ow Hasbro (Play-Doh’s owner), is seeking to trademark its distinct scent. Sound simple? Not quite.

The U.S. Patent and Trademark Office defines a trademark or service mark as “any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.” Think Google’s logo or the golden arches of McDonalds. More often than not, trademarks are tangible words or symbols branding a product or service. It gets a bit more complicated when you attempt to protect something intangible, like a scent.

There are two types of registrations: Principal and Supplemental. A Principal Registration is what Play-Doh has applied for and affords the most protection for a mark, including presumption of ownership in the event of litigation and the right to exclusive use of the mark. To qualify for the Principal Register, the mark must have achieved “secondary meaning.” That is, consumers must associate the mark with the particular product or service. So, again, think about the McDonalds arches. However, it is hard to deny that Play-Doh’s scent achieves similar distinctive brand recognition.

A Supplemental Registration, on the other hand, functions more as a holding place for a mark while it gains distinctiveness. Although it does not provide the same security as Principal Registration, the Supplemental Register is helpful in preventing others from registering their mark on either the principal or supplemental registers and is inherently easier to accomplish because, unlike the Principal Register, there is no opposition phase for others to attempt to block the mark.

Only a handful of other scent-based registrations exist. The first scent-based trademark was issued in 1991 for the scent of a line of embroidery thread and yarn. That’s right – yarn.   In 2013, Verizon Wireless attempted to trademark the perfume it s
prays in its stores; however, it was unsuccessful in achieving principal registration because many other companies similarly use scents to create a general ambiance in stores. Ultimately, Verizon was able to achieve a downgraded registration onto the Supplemental Register.

Others have attempted to trademark their scents with limited success, largely because it is difficult for scents to pass the “functionality test.” Put simply, a mark must not serve any practical function of the product or service other than to identify and distinguish it. That is why perfumes and air fresheners often fail to receive principal registration because the product is inherently designed for the functional purpose of smelling.

Whether Play-Doh will be successful in achieving its registration is to be determined. Nevertheless, as markets become increasingly more crowded, we will likely see more companies turning to scents as a method of branding and distinguishing their products.

Amber Reiner Skovdal, Esq.

Houston Harbaugh, P.C. 

Contact her at: reineral@hh-law.com or 412-288-4016