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bananaipindia · 5 years ago

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boAt Splashes Competitor’s Unjust Enrichment Dreams, Brexit to Not Effect UK Trademark System for Now, 'Mambacita' Trademark Filed by Kobe Bryant Weeks Before Death, Little Caesars Pizza Ventures into India with Veg Only Option, and more

New Post has been published on https://www.bananaip.com/ip-news-center/boat-splashes-competitors-unjust-enrichment-dreams-brexit-to-not-effect-uk-trademark-system-for-now-mambacita-trademark-filed-by-kobe-bryant-weeks-before-death-little-caesars-pizza-ven/

boAt Splashes Competitor’s Unjust Enrichment Dreams, Brexit to Not Effect UK Trademark System for Now, ‘Mambacita’ Trademark Filed by Kobe Bryant Weeks Before Death, Little Caesars Pizza Ventures into India with Veg Only Option, and morebrought to you by the Trademark Attorneys at BananaIP (BIP) Counsel.

INDIAN TRADEMARKS UPDATE:

“boAt” Splashes Competitor’s Unjust Enrichment Dreams

Delhi High Court has passed an interim injunction against Exotic Mile, an audio-gadgets business firm, for violating the registered trademark “boAt” of Imagine Marketing Pvt. Ltd. Imagine Marketing is the proprietor of boAt, a well know electronic products supplier in India. It contended that Exotic Mile had dishonestly adopted the trademark “BOULT”, which is phonetically and deceptively similar to “boAt”. Further, it alleged that the usage of the tagline ‘UNPLUG YOURSELF’ by Exotic Mile was confusingly similar to its tagline ‘PLUG INTO NIRVANA’. The Court while considering the presence of both companies one-commerce platforms,passed an interim injunction restraining Exotic Mile from using the trademark “BOULT” as well as the tagline ‘UNPLUG YOURSELF’.

INTERNATIONAL TRADEMARKS UPDATES

Brexit Not to Affect the UK Trademark System for Now

During the recent ratification of the ‘Withdrawal Agreement’ between the United Kingdom and the European Union, the Intellectual Property Office (IPO) of the UK has clarified that there will be no disruption to IPO services or changes to the UK IP system during the transition period (1st February, 2020 till 31st December, 2020). Accordingly, the UK will remain part of the EU trademark system and the UK legal representatives will continue to have the right to represent clients before the EU IPO. The International registrations for trademarks and designs designating the European Union via the Madrid and Hague systems will also continue to extend to the UK. The IPO has further informed that the businesses, organisations or individuals, that have applications for a EU trademark which will have a period of nine months from the end of the transition period to apply in the UK for the same protections.

‘Mambacita’ Trademark Filed by Kobe Bryant Weeks Before Death

Kobe Bryant, the legendary basketball player, had filed a trademark application for the word mark “Mambacita” at the United States Patents and Trademarks Office, just weeks before his and his daughter’s death in a tragic helicopter crash in California. Kobe Bryant, who went by the self-proclaimed nickname “The Black Mamba”, had affectionately dubbed his 13-year-old daughter Gianna, “Mambacita”.The trademark “Mambacita” was filed for sportswear including athletic shirts, shorts, hats, jerseys, sweatpants, sweatshirts, t-shirts, etc.

BRAND LICENSING UPDATES:

McDonald’s Ties up with Joester Loria Group to Bring Out Fashion Collection

McDonald’s Corporation, the world’s leading global foodservice retailer, is collaborating with the Joester Loria Group,a premier full-service brand licensing agency, based in the New York to develop collaborations and collection of fashion, accessories and collectibles for adults. McDonald’s first ever brand license was during the 1980’s and ever since has a history of partnering with leading fashion brands and retailers. By entering into the recent licensing agreement, Joester Loria Group would work closely with the McDonald’s global marketing team to tap into the brand’s unique cache, popular characters, and iconic brand campaigns.

Smiley Coming Out with Collectibles for Kids Through Game Maker

The Smiley Company, a London based brand licensing company, is collaborating with toy and games brand ‘Splash Toy’ to launch its first series of The Smileys collectibles. The collaboration will target kids in the 6-12 years age group and help them explore their emotions through a unique mix and match play pattern of The Smileys. The first series will be launched with blister packs, which include a secret Smiley and also blind boxes for toy distribution, and for kiosk distribution.

FRANCHISE UPDATE

Little Caesars Pizza Ventures into India with Veg Only Option

Little Caesars, the world’s third-largest pizza chain, headquartered in Detroit, Michigan has forayed into the Indian market with two stores in Ahmedabad, Gujarat through franchisee Phoenix Nexus. Little Caesars which is popular for its Hot-n-Ready pizza and bread has rolled out its vegetarian menu in the Indian market and is currently focused on the dine-in format of quick service restaurants. With its Indianised menu, consumer-focused strategies and affordable pizzas, the company has aggressive plans and looks forward to join hands with interested entrepreneurs to continue rapid growth throughout India.

DOMAIN NAME DISPUTE UPDATE

Lamborghini Stops Fraudulent Domain from Impersonating It

Automobili Lamborghini, the popular Italian luxury sports car manufacturer, had filed a complaint with the WIPO Arbitration and Mediation Center against jjoest, based in the US. Lamborghini alleged that the domain name “lamborghlni.com”, which is similar to its domain name “lamborghini.com”, was connected to a fraudulent email scheme by jjoest. The scheme used the mark and the email address to impersonate an employee of Lamborghini to obtain misdirected payments. The Administrative Panel headed by Nicholas Weston was convinced that the disputed domain was confusingly similar and jjoest used the domain name in bad faith. Thus, the Panel ordered the transfer of the disputed domain name to Lamborghini.

GEOGRAPHICAL INDICATION UPDATES

Spiti Chharma (Sea buckthorn) and Its Products Filed for GI

Spiti Chharma (Sea buckthorn) is a perennial, woody, nitrogen fixing and thorny deciduous shrub covered with silvery scales. Sea buckthorn which grows in cold regions is naturalised to snowfall or low temperature conditions. Sea buckthom grows in Lahaul Spiti, upper Kinnaur and Pangi in Chamba District of Himachal Pradesh.While, the Chharma (Sea buckthorn) fruits are used in cosmetics, the high concentration of vitamin C in its juices and squashesare useful for treating blood pressure, heart diseases, ulcers of the intestine, skin diseases, bronchitis and cancer. The Spiti Sea buckthorn Society of Kaza, Spiti, has filed an application for Spiti Chharma and its products under the agriculture, horticulture and forestry products category.

Authored and compiled by Poorvika Chandanam

About BIP’s Trademark Attorneys

The Trademark News Bulletin is brought to you by the Trademark/Copyright, IP Transactional Strategy Divisions of BananaIP Counsels, a Top IP Firm in India. Led by Sanjeeth Hegde, BIP’s trademark attorneys are among the leading experts in the field. If you have any questions, or need any clarifications, please write to [email protected] with the subject: Trademark News.

The weekly trademark news initiative is a part of their pro bono work and is aimed at spreading trademark awareness. You are free to share the news with appropriate attribution and backlink to the source.

Disclaimer: Kindly note that the news bulletin has been put together from different sources, primary and secondary, and BananaIP’s reporters may not have verified all the news published in the bulletin. You may write to [email protected] for corrections and take down.

#BREXIT #boAt #Kobe Bryant #Lamborghini #Little Caesars #Mambacita #McDonald #Sea buckthorn

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licensedproducers · 5 years ago

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Why Protecting Cannabis IP is Such a Challenge in the US

Acreage Holdings CEO Muses on What Companies Can Do to Better Protect Their Cannabis IP – LPC

One of the huge disadvantages companies have in the US is protecting cannabis IP (intellectual property). The reason, says Acreage Holdings CEO Kevin Murphy is simple: it’s still illegal in the US. “Of course, the best solution to these problems would be for the federal government to legalize cannabis,” he said. Murphy wrote an opinion piece about cannabis IP in Forbes (please see link below). “That would allow for national trademark rights and immediately eliminate many of the complications the industry now faces.” Those complications are not small. Generally speaking, if an American company generates any IP, they simply file it with the United States Patent and Trademark Office. But that only applies to products that can be lawfully sold in the US. Now that hemp is legal in the US, products derived from hemp can be registered. But cannabis IP is still wide open. “At my company, we are creating and licensing IP for products around the country,” he said. “We’re seeing firsthand how dealing with (cannabis IP) requires an extra level of attention.” Companies can’t even do anything as basic as registering their name. “A brand name registered in California may be owned by someone else in Maine,” he said. “Without the ability to have nationwide rights through federal trademark law, issuing a ‘nationwide’ licence is extraordinarily difficult.” This is similar to the issues companies have securing banking services.

How Can Companies Protect Their Intellectual Property in the US? – LPC

Murphy suggests companies take a series of steps to protect their cannabis IP as best as possible. First, companies must make their IP claims enforceable in all individual states. “The challenge for cannabis entrepreneurs is that cannabis IP needs to be rigid enough to be defensible against infringement, but also flexible enough to be applied across 33 different state regulatory schemes. That’s not easy to balance.” Next, he said, companies should take the time to ensure their cannabis IP does not infringe upon anyone else’s in each state. That process takes time, he said, but it’s worth it. Finally, when expanding to other states, he suggest licensing agreements. Local companies will already have local knowledge of laws and be compliant, and ultimately help secure cannabis IP in that state. He uses the example of Colorado companies selling in California. “Such use of the Colorado-based brand in connection with sales of the products in California may, in turn, support obtaining a trademark registration for the Colorado-based brand in California.” In case you’re wondering, companies cannot register their cannabis IP in Canada and have it apply in the US. On the flip side, this is sort of a microcosm of what may come. Canopy Growth has an agreement to buy Acreage Holdings when the US legalizes cannabis. In this case, Canopy Growth IP could, in theory, be registered through Acreage Holdings in the US. This editorial content from the LPC News Team is meant to provide analysis, insight, and perspective on current news articles. To read the source article this commentary is based upon, please click on the link below. Click here to view full story at www.forbes.com Read the full article

#AcreageHoldings #CannabisIP #CanopyGrowth

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edisonashley · 6 years ago

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Everything You Wanted to Know About Emojis and the Law

For the past couple of years, I have invested significantly in all things emojis. This post rounds up everything I’ve done during that period.

1) Emojis and the Law Article

I’m pleased to announce the final version of my paper, Emojis and the Law, was published in the Washington Law Review last month. This version supersedes my working draft, Surveying the Law of Emojis, that became one of my most popular SSRN downloads of the past 15 years. Some topics in the working draft got dropped from the final version, so for those points the working draft is the better citation.

You may be wondering why I posted the full working version, only to write a virtually new version and publish that. In March 2017, relatively late in the placement season, I circulated the working draft to about 50 journals and got zero offers. The journals’ lack of interest surprised me in part because the draft went on to spur a ton of conversation and many downloads, so I’m pretty sure some journals missed a prime opportunity. In any case, I decided to rework the paper and recirculate it in early February 2018, when it attracted over 10 offers. I’m OK being candid about coming up dry in the 2017 cycle because the placement process is fickle, and I’m not the only one who’s experienced its capriciously. I have concluded, however, that the only placement window I trust is the first two weeks of February because the so-called August window has also been dicey.

I chose the Washington Law Review for several reasons, including their willingness to publish it comparatively quickly (placement in February, actually published in October!) and their genuine enthusiasm for the article. How enthusiastic were they? For a law school costume contest, the editorial board dressed up as emojis in honor of the article:

Some media coverage of the Surveying the Law of Emojis draft:

Use of emojis in lawsuits is on the rise, ABA Journal, October 2017.

Experts: Lawyers can’t dismiss emojis as frivolous clutter, Massachusetts Lawyers Weekly, June 22, 2017.

Law professor says courts need to develop ‘necessary tools’ for interpreting emojis, Northern California Record, May 25, 2017.

Beware the Emoji Troll, Managing Intellectual Property, May 20, 2017.

What You Need to Know About Emoji Law (Yes, That’s a Thing), The Recorder, May 4, 2017.

2) Emojis and IP Article

After I posted the Surveying draft, WIPO Magazine asked me write a short article on Emojis and IP. In turn, I asked my former student Gabriella Ziccarelli, also an emoji expert, to collaborate with me. The article largely summarizes the larger work, but because it branched off about midway through the project, it has some pieces that don’t show up anywhere else. If you only want the highlights of the emojis/IP interface, the short piece might be a better choice than the big battleship document.

Co-authoring an article with a former student is one of my greatest professional moments. It’s incredibly gratifying to see our alumni thrive.

3) Blog Posts

Some of my emoji-related blog posts (all but the last one are outtakes from the Surveying draft):

Displaying Emoji Evidence in Judicial Opinions

Frequency of Courts’ References to Emojis and Emoticons Over Time

Trademark Registrations for Emojis

How a Chipmunk Emoji Cost an Israeli Texter $2,200 (with Gabriella Ziccarelli)

I’ve been patiently waiting for a really juicy emoji interpretation or IP case. Thus far, the Israeli small claims court case is the most “meaty” emoji ruling I’ve seen. I’m sure it’s coming, but it still hasn’t arrived yet. If you see any good cases, please send them my way!

4) Caselaw Dataset

I initially became interested in emoji law after seeing a court opinion reference to emoticons, which made me wonder how often that had happened. Eventually, I compiled every case referencing emojis and emoticons that I could find, and I have keyword alerts set up in Lexis and Westlaw to flag new ones. Unfortunately, there’s no automated way for me to find opinions displaying emojis or emoticons unless the court opinion actually uses one of those phrases, so my list is incomplete. (I fully explain the problems with judicial opinions and emojis in the Surveying draft).

Today I’m sharing the latest version of my caselaw dataset, which I update constantly. As you can see, I have found about 165 opinions referencing emojis or emoticons, of which about 30% are from 2018. I’ll have more to say about the 2018 cohort of emoji/emoticon cases in January.

5) Presentations and Interviews

Talk Slides

I’ve given about a dozen talks on emojis. Some of my slide decks:

My standard slide deck

Emojicon (these slides contain some material I’ve not written up elsewhere)

Bay Area IP Profs WIP talk on emojis and IP

Interviews (selected)

Emojis and the Law, Techdirt Podcast, August 22, 2018 (with Gabriella Ziccarelli)

“Danke, Internet!” – Folge 4: Emojis vor Gericht, Süddeutsche Zeitung, July 10, 2018.

Using emojis could land you in jail, expert says, February 21, 2018 (the video was widely syndicated across the nation on local TV news programs)

Online Sex Trafficking, Emojis, and How the Internet Has Changed Law, Law.com Podcast, August 1, 2017 (talking about emojis was way more fun than talking about FOSTA)

The university also put together a promo video.

6) Emoji Items

For me, emojis are not just an area of academic study, they are now an integral and happy part of my life. Some examples:

I have decorated my office with many emoji stickers. Photo (I’ve since added dozens more).

My kids bought me an emoji tie. Photo (with USPTO Director Andrei Iancu). I also bought the Techdirt Emoji-ment sweatshirt.

At IPSC, my fan club honored my birthday with a Poop Emoji cake.

My emoji mug. Photo.

Combining two of my all-time favorite things, I have a dozen emoji slinkies!!!

Everything You Wanted to Know About Emojis and the Law published first on https://immigrationlawyerto.weebly.com/

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bestmarijuanaboutiques · 5 years ago

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USPTO Informs Drake His US TM Registration Has Been Rejected

New Post has been published on https://bestmarijuanaboutiques.com/?post_type=wprss_feed_item&p=23855

USPTO Informs Drake His US TM Registration Has Been Rejected

Marketwatch report

Drake’s attempt to trademark Canada’s warning label for marijuana appears to have failed, but not entirely because Canada owns the rights.

The U.S. Patent and Trademark Office informed the rapper Thursday that his attempt to trademark the symbol,originally reported by MarketWatch earlier this month, is legally rejected. The main reason for rejecting the application, however, was that another company actually has a trademark for the phrase “THC.”

Canada’s rights to the warning label were cited as a reason for the application may be denied for specific products containing marijuana with Tetrahydrocannabinol, commonly referred to as THC, a psychoactive component in cannabis. All the potential uses cited by Drake in his patent application — which focused on most kinds of apparel, such as clothing, shoes and various kinds of hats — were denied because another company has the trademark on the phrase THC.

That company, Pineapple Express Inc.PNPL,-76.00%, is traded over the counter in the U.S. and owns a portfolio of intellectual property and trademarks,including at one time thc.com. It recently launched a California cannabis delivery business.

The letter,publicly filed by the U.S. government, lists several other reasons why Drake’s marijuana trademark application may ultimately be denied: it may be confused with others, they can’t be used to sell federally illegal goods such as weed, and it doesn’t distinguish the products from others.

Read the full report at https://www.marketwatch.com/story/drakes-attempt-to-trademark-canadas-weed-warning-label-hits-a-stop-sign-2019-11-23

USPTO

Source: https://tsdr.uspto.gov/documentviewer?caseId=sn88612716&docId=OOA20191121185715#docIndex=0&page=1

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

U.S. Application Serial No. 88612716

Mark: THC

Correspondence Address:

ROBERT KLEINMAN

COMMON SENSE COUNSEL

404 WEST 7TH STREET

AUSTIN, TX 78701

Applicant: Dream Crew IP

Reference/Docket No. N/A

Correspondence Email Address:

[email protected]

NONFINAL OFFICE ACTION

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandonedusing the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.

Issue date: November 21, 2019

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – CLASS 25 ONLY

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 1954405. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration. This refusal applies only to Class 25.

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

COMPARISON OF THE MARKS

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).

Registrant’s mark is THC in standard characters. Applicant’s mark is THC set inside a stop sign design with a cannabis leaf in the center of the sign. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

Here both marks are comprised of identical lettering, namely, THC. This literal element in applicant’s mark presents a similar commercial impression to the registered mark. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

COMPARISON OF THE GOODS

The compared goods need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

In this case the registrant is using its mark in connection with clothing, namely T-shirts, hats, beanies, pants, shorts, baseball jerseys, jackets, sweatshirts, polo shirts and sweat pants. Applicant has identified many of the same clothing items, namely, t-shirts, hats, shorts, jackets, sweatshirts and sweat pants. Applicant has also listed some broader terms that encompass some of the more specific item listed by registrant such as beanies (a type of hat), baseball jerseys (a type of jersey), pants (trousers) and shirts (polo shirts).

When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).

In this case, the goods in the application and registration(s) are essentially identical. Therefore, it is presumed that the channels of trade and class (es) of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods are related.

Because the goods are either the same or very closely related, coupled with the fact that the dominant element of applicant’s mark is identical to the registered mark, consumers who encounter the THC branded clothing of applicant and registrant in the marketplace could likely confuse the source of the goods.

POTENTIAL REFUSAL – PRIOR PENDING APPLICATION – CLASSES 5, 31, 34 ONLY

In addition to the cited registration above, applicant should note the following potential refusal under Section 2(d) of the Trademark Act. The filing date of pending U.S. Application Serial No. 88239310 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application. Note that this potential refusal is limited only to the goods identified in Classes 5, 31 and 34.

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

Applicant should note the following additional ground for refusal.

CANNABIS-RELATED GOODS REFUSAL –– BASED ON EVIDENCE – NO BONA FIDE

INTENT TO LAWFULLY USE IN COMMERCE – CLASSES 5, 31, 34

Registration is refused because applicant did not have a bona fide intent to lawfully use the applied-for mark in commerce as of the filing date of the application. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907. This refusal is limited only to Classes 5, 31 and 34.

To qualify for federal trademark/service mark registration, the use of a mark in commerce must be lawful. Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (stating that “[a] valid application cannot be filed at all for registration of a mark without ‘lawful use in commerce’”); TMEP §907; see In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); Coahoma Chemical Co., Inc. v. Smith, 113 USPQ 413 (Com’r Pat. & Trademarks 1957) (concluding that “use of a mark in connection with unlawful shipments in interstate commerce is not use of a mark in commerce which the [Office] may recognize.”). Thus, the goods to which the mark is applied must comply with all applicable federal laws. See In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016) (citing In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993) (noting that “[i]t is settled that the Trademark Act’s requirement of ‘use in commerce,’ means a ‘lawful use in commerce’”)); In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907.

The CSA prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and any material or preparation containing marijuana. 21 U.S.C. §§812, 841(a)(1), 844(a); see also 21 U.S.C. §802(16) (defining “[marijuana]” as “all parts of the plant Cannabis sativa L., whether growing or not; the seeds thereof; the resin extracted from any part of such plant; and every compound, manufacture, salt, derivative, mixture, or preparation of such plant, its seeds or resin” (subject to certain exceptions)).

In this case the applicant is a company owned largely by a well-known rap musician by the name of “Drake” who has recently partnered with a Canadian cannabis company to produce marijuana. See the attachments from MARKETWATCH.COM, PITCHFORK.COM, ROLLINGSTONE.COM, HOLLYWOODREPORTER.COM, CNBC.COM, BET.COM, LEAFLY.COM and XXLMAG.COM. Applicant’s identifications in Classes 5, 31 and 34 include the generally broad wording herbs for medicinal purposes, raw herbs and herbs for smoking. Cannabis is an herb. See the attachments from WIKIPEDIA.ORG and NATIONALGEOGRAPHIC.COM. The letters “THC” as used in the mark stand for “tetrahydrocannabinol” which is the main psychoactive compound in cannabis. See the attachments from MERRIAM-WEBSTER.COM, NATIONALGEOGRAPHIC.COM and LIVESCIENCE.COM.

In order for an application to have a valid basis that could properly result in a registration, the use of the mark has to be lawful. See In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976) Applicant’s goods consist of, or include, items or activities that are or were prohibited by the CSA, namely, herbs for medical use, raw herbs and herbs for smoking which the evidence shows is clearly intended to include marijuana. Applicant did not have a bona fide intent to lawfully use the applied-for mark in commerce in connection with the goods. See In re JJ206, LLC, 120 USPQ2d 1568, 1569 (TTAB 2016)(“where the identified goods are illegal under the federal Controlled Substances Act (CSA), the applicant cannot use its mark in lawful commerce, and ‘it is a legal impossibility’ for the applicant to have the requisite bona fide intent to use the mark.”); TMEP §907.

Applicant should note the following additional ground for refusal.

REGISTRATION REFUSED – FAILURE TO FUNCTION – CLASS 5, 31 AND 34 ONLY

Registration is refused because the applied-for mark is a universal symbol that does not function as a trademark or service mark to indicate the source of applicant’s goods and to identify and distinguish them from others. Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127. In this case, the applied-for mark is a universal symbol that merely conveys information about applicant’s or similar goods. See In re Boston Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058-59 (Fed. Cir. 1999); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006); In re Melville Corp., 228 USPQ 970, 971 (TTAB 1986); TMEP §1202.17(c)(i)(A), (c)(iii). This refusal applies only to the goods identified in Classes 5, 31 and 34.

Determining whether a symbol functions as a trademark or service mark involves considering (1) the significance of the symbol, (2) the nature of the symbol’s use in the relevant marketplace, and (3) the impression created when the mark is used in connection with the identified goods. TMEP §1202.17(c)(i); see In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Aerospace Optics, Inc., 78 USPQ2d at 1862. A common universal symbol that is used in its usual context or field, or with relevant goods, is not likely to be viewed as a source indicator and will likely impart its generally recognized meaning instead. See TMEP §1202.17(c)(i)(A) (citing In re Schwauss, 217 USPQ 361 (TTAB 1983)).

The attached evidence from CANADA.CA, MJPACKAGING.COM, MARKETWATCH.COM and LEAFLY.COM shows that the applied-for mark is identical to the symbol mandated under Canadian law to indicate that goods bearing such a symbol contain “THC,” the main psychoactive cannabinoid found in cannabis or marijuana. The purpose of the symbol is to warn consumers that products, such as edibles and smoking matter, such as smoking herbs, contain more than 10 micrograms of THC per gram. See the attachment from CANADA.CA. It serves no source identifying function because the symbol is intended to be used merely to convey information about the material content of the product. Even though the mark is mandated for use on marijuana products in Canada, the symbol was been widely reported in news circulated in the United States. See e.g., the attachments from MARKETWATCH.COM, GRAPHICARTSMAG.COM and LEAFLY.COM. A significant number of American consumers routinely travel to Canada with more than 12 million Americans visiting the country through the first six months of 2019. See the attachments from CNN.COM and NARCITY.COM. A significant number of American consumers of marijuana products would, therefore, be familiar with the Canadian THC symbol and the fact that it is intended to provide information about the material content of the products and would likely view that symbol the same way for cannabis products sold in the United States.

Because consumers are accustomed to seeing this symbol used in this manner, when it is applied to applicant’s goods, they would perceive it merely as informational matter indicating that the goods are comprised of THC derived from cannabis or marijuana. Thus, the symbol will not be perceived as a mark that identifies the source of applicant’s goods in Classes 5, 31 and 34.

An applicant may not overcome this refusal by amending the application to seek registration on the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f). TMEP §1202.17(c)(ii)(B); see In re Eagle Crest, Inc., 96 USPQ2d at 1229.

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

IDENTIFICATION OF GOODS – CLASSES 5, 31 AND 34

Applicant’s mark consists of the wording “THC”, which indicates that applicant’s goods have and/or exhibit, (or will have and/or will exhibit) the following feature or characteristic: that the goods are comprised of tetrahydrocannabinol. See the attachments from MERRIAM-WEBSTER.COM, LIVESCIENCE.COM and NATIONALGEOGRAPHIC.COM.

This feature or characteristic is considered desirable for applicant’s goods because THC is the key psychoactive component of marijuana. It is reputed to have medicinal properties that some consumers use for treating medical conditions such as pain, seizures, nausea, anxiety, and cancer among other things. See the attachments from BUSINESSINSIDER.COM, HEALTH.HARVARD.EDU and CARE2.COM. Furthermore, a study has shown that consumers are willing to pay more for their desired amount of THC in cannabis products whether it be for recreational or medicinal use. See the attachment from CANNABISBUSINESSTIMES.COM

However, if some or all of the goods do not (or will not) in fact have or exhibit this feature or characteristic, then registration may be refused because the mark consists of or includes deceptive matter in relation to the identified goods . See 15 U.S.C. §1052(a); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); TMEP §1203.02-.02(b).

To avoid such refusal, applicant may amend the identification to specify that the goods possess this relevant feature or characteristic. See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq. However, merely amending the identification to exclude goods or services with the named feature or characteristic will not avoid a deceptiveness refusal. TMEP §1203.02(f)(i).

Therefore, applicant may amend the identification to the following, if accurate: (proposed changes in boldface).

CLASS 5 – Herbs for medicinal purposes comprised of tetrahydrocannabinol (THC) in a significant amount;

CLASS 31 – Raw herbs comprised of tetrahydrocannabinol (THC) in a significant amount;

CLASS 34 – Herbs for smoking, comprised of tetrahydrocannabinol (THC) in a significant amount.

Class 25 is acceptable as currently drafted in the application.

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods may not later be reinserted. See TMEP §1402.07(e).

REQUEST FOR INFORMATION – RULE 2.61(B)

Applicant is further advised that if the goods do not have THC in significant amounts, such as hemp with less than 0.3 percent THC, then a refusal to register under Section 2(a) of the Trademark Act, 15 USC Section 1052(a), will be issued. Applicant is hereby required to provide information about the material content of the goods in Classes 5, 31, and 34 and in particular, indicate whether the goods will contain THC in an amount greater than 0.3 percent. See 37 C.F.R. §§2.61(b), 2.69; In re Stellar Int’l, Inc., 159 USPQ 48, 50-52 (TTAB 1968); TMEP §§814, 907. The requested information should include fact sheets, brochures, advertisements, and/or similar materials relating to the goods. If such materials are not available, applicant must provide a detailed factual description of the goods. Any information submitted in response to this requirement must clearly and accurately indicate the nature of the goods identified in the application.

Applicant is also required to indicate whether the letters “THC” have or will be used as a varietal or cultivar name for any type of plant and whether “THC” has ever been used or will be used in connection with a plant patent, utility patent or certificate for plant-variety protection.

Failure to satisfactorily respond to a requirement for information is a ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re Garden of Eatin’ Inc., 216 USPQ 355, 357 (TTAB 1982); TMEP §814.

Please note that merely stating that information about the goods and services is available on applicant’s website is an inappropriate response to the above requirement and is insufficient to make the relevant information properly of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

DISCLAIMER REQUIRED

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

In this case, applicant must disclaim the wording “THC” and the image of a cannabis leaf because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).

As the attached evidence shows, “THC” is the primary psychoactive component of marijuana or cannabis plants which are classified as “herbs” which may be used both recreationally and medicinally. Consumers are familiar with this abbreviation and know that it is merely descriptive of an ingredient or component of cannabis. Applicant’s goods are identified as “herbs for medicinal purposes, raw herbs and herbs for smoking.” This wording is broad enough to include cannabis containing THC. This wording is, therefore, merely descriptive of the material content of the goods.

The design of a cannabis/marijuana leaf is the legal equivalent of the wording “cannabis or marijuana.” The attached evidence from WIKIPEDIA.ORG shows and describes various cannabis leaves. The attachments from CANADA.CA, MARKETWATCH.COM and LEAFLY.COM show that the leaf design is intended to convey to consumers that the products are comprised of cannabis containing significant quantities of THC. Therefore, the leaf image is the legal equivalent of “cannabis,” the material content of the goods.

Applicant may respond to this issue by submitting a disclaimer in the following format:

No claim is made to the exclusive right to use “THC” or the “image of a cannabis leaf” apart from the mark as shown in Classes 5, 31 and 34.

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.

DESCRIPTION OF THE MARK – ALL CLASSES

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Descriptions must be accurate and identify all the literal and design elements in the mark. See 37 C.F.R. §2.37; TMEP §§808 et seq. Here the description fails to contain a color location statement describing where the various claimed colors appear in the mark.

The following description is suggested, if accurate: The mark consists of a red stop sign outlined in white and red with the color black appearing in the bottom quarter of the stop sign. There is a white cannabis leaf in the center and the letters “THC” in white set inside the black portion of the sign.

Please call or email the assigned trademark examining attorney with questions about this Office action. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.

How to respond. Click to file a response to this nonfinal Office action

/Jeffrey J Look/

Jeffrey J Look

Trademark Examining Attorney

Law Office 108

Phone: 571-272-1652

Email: [email protected]

RESPONSE GUIDANCE

Missing the response deadline to this letter will cause the application to abandon. A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.

Responses signed by an unauthorized party are not accepted and can cause the application to abandon. If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant. If applicant has an attorney, the response must be signed by the attorney.

If needed, find contact information for the supervisor of the office or unit listed in the signature block.

#Array

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rolandfontana · 6 years ago

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Doing Business in China or with China: It’s All Good

As lawyers, we almost cannot help but have a wary view towards just about everything we do, China included.

There are two main reasons for this. First, we have been trained to look at everything with a critical eye. Companies do not hire and pay lawyers to have them cheerfully proclaim, “this all looks great. I love it.” No, we are usually retained to figure out the potential risks and problems and then provide contractual or structural solutions to minimize or eliminate them for our clients. Second, and probably most importantly here, clients and potential clients rarely (it does sometimes happen) write or call their lawyers just to let them know everything is going great and the weather (is delightful. Our clients contact us to avoid problems or to fix problems and for this reason, problems are our focus.

For every matter our China lawyers handle that stem from a problem, we handle probably fifty matters that do not involve an existing problem. Why then does this blog focus so much on the problems with doing business in China and so seldom talk about how great it can be? This question is actually an almost direct quote from an irritated China consultant friend of mine who recently complained to me about how our blog has become “too downbeat” on China.

Let me explain to you-all and answer to my China consultant friend….

First, we would not be very helpful to our readers if all we did was say that China has 1.5 billion people to whom you can sell your wares and all is great. Stop.

Second, and as I mentioned above, our job as lawyers and as China lawyers is to point out the potential problems and risks in doing business in China or with China. I see our job as bloggers as being roughly the same.

Third, though we handle fifty China legal matters that do not involve existing problems for every one that does involve a problem, other ratios regarding such things are much smaller.

When I say “other ratios regarding such things are much smaller,” I am referring to money, time and angst and the below are some fairly common examples of what I mean.

Intellectual property. Our international IP lawyers work with our clients to help protect their IP, using various mechanisms, such as NNN Agreements, Manufacturing Agreements, Licensing Agreements, Product Ownership Agreements, Mold Ownership Agreements, Non-Compete Agreements, China trademark registrations, China copyright registrations, China patent registrations and regular IP audits. But if we were to add up the time and fees we spend on all these things (and most clients really only need 1-4 of these things), they would equal less time and money typically incurred when companies come to us with a massive IP problem. We once represented a US company with a massive IP problem. That representation involved multiple lawsuits against a Chinese company: a trademark action in Beijing, a trademark lawsuit in one US state, two patent litigation lawsuits in another US state and two trademark/patent lawsuits in yet a third US state. In other words, six lawsuits in two different countries and three different states. Needless to say, all this litigation was incredibly time-consuming and expensive and none of it would have occurred if the US company had appropriate China contracts and IP registrations in the first place.

Employment Law. Our typical China employment law package consists of China Employment Contracts, China Employer Rules and Regulations, and all sorts of supplementary agreements, like China Employee Non-Compete Agreements, China Employee Trade Secret Agreements, etc. In addition to these things, our China employment lawyers regularly provide our clients with employment law counseling and yearly China Employment Audits, all so as to prevent future problems and lawsuits. If you were to add up the time and money incurred on all this “preventative” employment work it would be less than one typical contentious employment lawsuit. Years ago, a Chinese company doing business in the United States asked me what my firm would charge it for an employee termination agreement in California and I told them. Maybe two months later this same company called to reveal that it had used an “off the shelf” employee termination agreement with the employee it terminated and that employee was now suing them in California because the agreement they had used did not comply with California law. The Chinese company ended up having to pay maybe ten times the attorneys fees to quickly wrap up the litigation as it would have paid for the employee termination agreement and it had to pay the employee double the severance to which it had initially agreed.

China WFOE Formations. We are always talking about how important it is to register your WFOE in China if you are doing business in China. See Doing Business in China Without a WFOE: Will the Defendant Please Rise. There are a lot of reasons for this. We had a company come to us about forming a China WFOE and then decide (against our advice) to delay so those WFOE formation costs could go into next year’s budget. Unfortunately, the Chinese government did not wait until the next year and this company ended up having to pay about double in attorneys fees (as compared to just forming the WFOE) to negotiate a resolution with the Chinese government that also included their having to pay a hefty (though reduced) amount in tax penalties.

So yes, the problems foreign companies face when doing business in China and with China are what consume us, both in terms of preventing them and in terms of dealing with them when they happen. But we fully realize China is a lot more than just a mass of problems and in the next week and month — especially now when things are looking so grim what with the trade disputes and all — we will write as much as we can about the positives of doing business in and with China and the great business opportunities that remain there.

If anyone has any positive business stories they wish to share about China, please let us know and we will work to include them.

It’s all good….

Doing Business in China or with China: It’s All Good syndicated from https://immigrationattorneyto.wordpress.com/

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businessguide12-blog · 6 years ago

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Startup Law A to Z: Regulatory Compliance

New Post has been published on https://businessqia.com/awesome/startup-law-a-to-z-regulatory-compliance/

Startup Law A to Z: Regulatory Compliance

Startups are but one species in a complex regulatory and public policy ecosystem. This ecosystem is larger and more powerfully dynamic than many founders appreciate, with distinct yet overlapping laws at the federal, state and local/ city levels, all set against a vast array of public and private interests. Where startup founders ensure opportunity for interruption in regulated marketplaces, lawyers attorney prudence: regulations exist to promote certain strongly-held public policy objectives which( unlike your startup’s business model) carry the force of law.

Snapshot of the regulatory and public policy ecosystem. Image via Law Office of Daniel McKenzie

Although the canonical “ask forgiveness and not permission” approach taken a number of Airbnb and Uber circa 2009 might lead founders to conclude it is strategically acceptable to “move fast and break things”( including the law ), don’t lose sight of the resulting suits and enforcement actions. If you seem closely at Airbnb and Uber today, each have devoted immense resources to building regulatory and policy squads, lobbying, public relations, defending suits, while increasingly looking to work within the law rather than outside it- not to mention, in the case of Uber, a change in leadership as well.

Indeed, more recently, examples of founders and startups running into serious regulatory issues are platitude: whether in healthcare, where CEO/ Co-founder Conrad Parker was forced to resign from Zenefits and later fined approximately $500 K; in the securities registration arena, where cryptocurrency startups Airfox and Paragon have each been fined $250 K and further could be required to return to investors the millions raised through their respective ICOs; in the social media and privacy realm, where TikTok was recently fined $5.7 million for infringing COPPA, or in the antitrust context, where tech giant Google is facing billions in penalties from the EU.

Suffice it to say, regulation is not a low-stakes table game. In 2017 alone, according to Duff and Phelps, US fiscal regulators levied $24.4 billion in penalties against companies and another $621.3 million against people. Particularly in today’s highly competitive business scenery, even if your startup can financially absorb the fines for non-compliance, the additional stress and distraction for your squad may still inflict serious injury, if not an outright death-blow.

The best style to avoid regulatory setbacks is to first understand relevant regulations and work to develop compliant policies and business practices from the beginning. This article represents a step in that direction, the fifth and final installment in Extra Crunch’s exclusive “Startup Law A to Z” series, following previous articles on corporate matters, intellectual property( IP ), customer contracts and employment statute.

Given the breadth of activities subject to regulation, however, and the many corresponding regulations across federal, country, and municipal levels , no analysis of any particular regulatory framework would be sufficiently complete here. Instead, the purpose of this article is to provide founders a 30,000 -foot view across several dozen applicable laws in key regulatory areas, providing a “lay of the land” such that with some additional navigation and guidance, an optimal course may be charted.

The regulatory areas highlighted here include:( a) Taxes;( b) Securities;( c) Job;( d) Privacy;( e) Antitrust;( f) Ad, Commerce and Telecommunications;( g) Intellectual Property;( h) Financial Services and Insurance; and finally( i) Transportation, Health and Safety.

Of course, some regulations may touch on multiple regulatory regions, for example, the “Fair Credit Reporting Act” is a law ultimately about privacy, but it impacts many financial and employment-related services as well. Certain statutes may therefore be cross-listed in more than one regulatory region. Also, since we can’t look at every U.S. state and city, this article will focus primarily on the federal and California state laws.

After you focus on the particular regulatory areas that may implicate your business, next reference the short quotations and links to relevant primary and secondary sources below, then work to identify the specific compliance dangers you face. This is where other Extra Crunch resources can help. For example, the Verified Experts of Extra Crunch include some of the most experienced and skilled startup lawyers in practice today. Use these profiles to identify lawyers who are focused on serving companies at your particular stage and then seek out any further guidance you need to address the regulatory matters pertinent to your startup.

With that as context, the Startup Law A to Z- Regulatory Compliance checklist is below :P TAGEND

Taxes

Federal

Federal Employer Number Income Tax Estimated Taxes Self-Employment Tax Employment Taxes Excise Tax Internal Revenue Code Rule 409 A Internal Revenue Code Section 422 and 423 Internal Revenue Code Section 83( b )

California

State Employer Number Foreign Qualification Franchise and Income Tax Sales and Use Taxes Special Taxes and Fees

Securities

Federal

Securities Act of 1933 Securities Exchange Act of 1934 Jumpstart Our Business Startups Act of 2012 Internal Revenue Code Rule 409 A Internal Revenue Code Section 422 and 423 Internal Revenue Code Section 83( b )

California

Corporate Securities Law of 1968

Employment

Federal

Affordable Care Act Age Discrimination in Employment Act of 1967( ADEA ) Americans with Disabilities Act of 1990( ADA ) Civil Rights Act of 1964 COBRA Requirements Employee Retirement Income Security Act of 1974( ERISA ) Equal Pay Act of 1963 Federal Fair Labor Standards Act( FLSA ) Genetic Information Nondiscrimination Act Immigration Reform and Control Act National Labor Relations Act Pregnancy Discrimination Act

California

Disabled Persons Act Fair Employment and Housing Act Family Rights Act New Parent Leave Act Unruh Civil Rights Act Worker’s Compensation Insurance( Cal. Labor Code Section 3700 )

Privacy

Federal

Federal Trade Commission Act Children’s Online Privacy Protection Act( COPPA ) Health Insurance Portability and Accountability Act( HIPAA ) Health Information Technology Act( HITECH ) Fair Credit Reporting Act Gramm-Leach-Bliley Act

California:

Consumer Privacy Act of 2018 Online Privacy Protection Act of 2003( Cal-OPPA ) Confidentiality of Medical Information Act Consumer Credit Reporting Agencies Act Electronic Eavesdropping, Invasion of Privacy Act Insurance Information and Privacy Protection Act Privacy Rights for California Minors in the Digital World Shine the Light Law Student Online Personal Information Protection Act

International:

GDPR

Antitrust

Federal

Clayton Act Robinson-Patman Act Sherman Act

California

Cartwright Act

Advertising, Commerce and Telecommunications

Federal

Federal Trade Commission Act Clarifying Lawful Overseas Use of Data Act Communications Decency Act, Section 230 Computer Fraud and Abuse Act Controlling Assault of Non-Solicited Pornography& Marketing Act( CAN-SPAM ) Electronic Communications Privacy Act Export Administration Regulations Restore Online Shoppers’ Confidence Act Telecommunications Act

California

Consumers Legal Remedies Act Unfair Competition Law Comprehensive Computer Data Access and Fraud Act

Intellectual Property

Federal

Anticybersquatting Consumer Protection Act Copyright Act, Copyright Revision Act of 1976 Digital Millennium Copyright Act Defend Trade Secrets Act of 2016 Economic Espionage Act of 1996 Electronic Communications Privacy Act of 1986( ECPA ) Prioritizing Resource and Organization for Intellectual Property Act of 2008 Lanham( Trademark) Act of 1946 Leahy-Smith America Invents Act No Electronic Theft Act Patent Act

California

Uniform Trade Secrets Act

Financial Services and Insurance

Federal

Gramm-Leach-Bliley Financial Modernization Act Dodd-Frank Act Fair and Accurate Credit Transactions Act Fair Credit Reporting Act Financial Industry Regulatory Authority Sarbanes-Oxley Act of 2002 Unlawful Internet Gambling Enforcement Act of 2006

California

Financial Information Privacy Act Song-Beverly Credit Card Act of 1971

Transportation, Health& Safety

Federal

Department of Transportation Act Federal Food, Drug, and Cosmetic Act

California

Confidentiality of Medical Information Act Public Utilities Act

Before diving into further detail, it may be helpful for some readers to note the distinction between a statute and a regulation. Simply put, regulations offer more detailed direction on how certain statutes should be followed. So regulations are not technically statutes, but they carry the force of statute( including penalties for violation ), since they are adopted by governmental agencies under authority granted by ordinance. Beyond that, understanding how laws and regulations are actually legislated is helpful to illustrate the extent to which the process is politically driven.

In the U.S ., a bill are required to pass both legislative branches of government, then, if signed by the executive branch, it will be codified in ordinance as law( Schoolhouse Rock anyone ? ). Once codified, the legislative branch will approve the relevant executive department or agency to determine whether specific regulations are necessary to give the law impact. If so, those executive departments or bureaux will determine what further regulations are needed, and in turn, work to enforce them.

At the federal level, for example, proposed regulations are developed first through a “Notice of Proposed Rulemaking, ” listed in the Federal Register and filed in the corresponding executive agency’s official docket( available at Regulations.gov ). This affords the public an opportunity to comment on the regulations. After receiving comments, the filing bureau may revise the proposed regulation before final regulations are issued, which again will be published in the Federal Register and then filed under the agency’s official docket at Regulations.gov, before they are codified in the Code of Federal Regulations( CFR ).

At nearly every step in this process then, institutions, government, and interest group are running- sometimes at cross purposes- to shape what the law will be and how it will impact your startup.

The Startup Law A to Z- Regulatory Compliance reference guide is below :P TAGEND

A. TAXES

Read more: feedproxy.google.com

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growlegalweed-blog · 6 years ago

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Legal Weed Resources

Check out... https://legalweed.gq/420/article-wendel-rosen-key-due-diligence-issues-for-cannabis-investors/

Article: Wendel Rosen: Key Due Diligence Issues for Cannabis Investors

Authored By: Karen Balderama

More than a year after legalization of recreational cannabis in California, the maturing California cannabis industry has seen an exponential increase in capital raising and M&A activity. Sophisticated investors and established companies are jumping in and making deals happen, infusing operators with capital and betting on even more growth if and when federal legalization occurs. Investors from Canada, where recreational marijuana is legal, are particularly interested in the California market. California cannabis companies are a popular target because they represent a foothold in the largest legal cannabis market in the world.

Before jumping in, however, investors should conduct thorough due diligence to uncover any potential landmines. The cannabis industry is unique in that many companies are emerging out of the illegal ��black” or semi-legal “gray” market and may be operated by individuals who are not familiar with conventional business practices. Investors should be aware of the unique issues they will encounter when reviewing companies newly subject to complex and quickly evolving rules and regulations. In this environment, the potentially high upside is tempered by significant risk.

Investors who are new to the cannabis industry should be aware of the key areas that may require increased focus during the due diligence process. Along with my colleague, Rob Selna, I will be discussing these key due diligence issues and how investors can address them at the O’Cannabiz Conference in Toronto on April 27, with real-life examples from recent financing and M&A transactions.

1. Local and State Licensing

Without a local permit and state license to operate, a company cannot do business in the legitimate California cannabis market. While this sounds like a no-brainer, investors must ensure that any company they review has all the proper required state and local permits it needs to operate. Given the new and untested California licensing process, an investor must ask some basic questions, such as: If the company does not have a permanent license, is it in the process of obtaining one? Is there any risk that it can be denied a local permit or a permanent license?

2. Capitalization and Corporate Records

One particular problem for cannabis companies, is that they may have been started and operated without legal help. While some disorganization can be accommodated, a company ready for investment or acquisition should have some level of basic corporate housekeeping. Due diligence questions may include: Have corporate actions been properly documented and approved? Is the company in compliance with its own articles of incorporation and bylaws? Are there risks of other “founders” coming out of the woodwork to claim ownership in the company?

3. Tax and Financials

It’s common knowledge that cannabis companies are taxed heavily. Some companies may have come up with creative solutions to try to get around this, or they may have handled tax issues themselves without getting sound advice from accounting professionals. Questions to ask include:

What banking arrangements, if any, does the company have in place?

Has the company filed accurate tax returns?

Has it paid all of its local, state and federal taxes?

Is it at risk for an IRS audit?

Could there be a large tax liability?

Like corporate records, companies also may have neglected to keep complete and proper financial records. Investors should engage accountants well-versed in the cannabis industry to review a target company’s tax returns and financial information so they understand the risks involved.

4. Intellectual Property

After it obtains a license to operate, a company’s intellectual property (trademarks, trade secrets, patents, etc.) may be some of the most valuable assets that a cannabis company has. An investor should examine how well the company’s IP is protected, understanding that federal registration of certain intangible assets may not be available for an “illegal” business activity. It is also critical for investors to know whether any other parties (such as employees or partners) have a valid claim of ownership on the IP, or whether the company’s IP infringes on another party’s intellectual property.

5. Business Operations and Agreements

Investors should carefully examine how the business has been operated to assess other possible risks. This bucket includes employment issues (such as proper classification of employees, wage and hour issues, etc.); lease agreements and other real estate matters; contracts with customers and suppliers; adequate levels of insurance coverage; adoption of and compliance with internal controls, policies and procedures; compliance with environmental laws; and compliance with other rules and regulations that may apply. Noncompliance in each of these areas could present a risk of liability to investors. Ideally, once due diligence on a cannabis company is completed, there are no significant issues that present a heightened risk of liability. If there are issues, it is best to uncover these issues and address them early in the process. If the company presents too high a risk of liability, investors can negotiate better terms and demand certain protections, or they might decide to pass on a particular opportunity altogether.

Author Bio:

Karen represents corporate and individual clients in complex corporate transactions, as well as general business and securities matters. Her practice involves mergers and acquisitions, representing both buyers and sellers, and venture capital transactions, representing both investors and portfolio companies. Karen’s practice also involves private equity investments, private placements, and corporate restructurings. She regularly advises clients on issues involving entity selection and formation, corporate structuring, corporate governance, shareholder agreements, buy-sell agreements, employment and non-competition/non-solicitation agreements, intellectual property, and business contracts. She works with clients ranging from family-owned businesses and professional offices to start-up and other small or mid-sized privately held companies in a wide variety of industries, including food and beverage, cannabis, manufacturing, technology, real estate, construction, and professional services.

More Info: https://www.wendel.com/attorneys-staff/attorneys/balderama-karen-j

#Article #Cannabis #Diligence #Investors #Issues #Rosen #Wendel

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toomanysinks · 6 years ago

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Startup Law A to Z: Regulatory Compliance

Startups are but one species in a complex regulatory and public policy ecosystem. This ecosystem is larger and more powerfully dynamic than many founders appreciate, with distinct yet overlapping laws at the federal, state and local/city levels, all set against a vast array of public and private interests. Where startup founders see opportunity for disruption in regulated markets, lawyers counsel prudence: regulations exist to promote certain strongly-held public policy objectives which (unlike your startup’s business model) carry the force of law.

Snapshot of the regulatory and public policy ecosystem. Image via Law Office of Daniel McKenzie

Although the canonical “ask forgiveness and not permission” approach taken by Airbnb and Uber circa 2009 might lead founders to conclude it is strategically acceptable to “move fast and break things” (including the law), don’t lose sight of the resulting lawsuits and enforcement actions. If you look closely at Airbnb and Uber today, each have devoted immense resources to building regulatory and policy teams, lobbying, public relations, defending lawsuits, while increasingly looking to work within the law rather than outside it – not to mention, in the case of Uber, a change in leadership as well.

Indeed, more recently, examples of founders and startups running into serious regulatory issues are commonplace: whether in healthcare, where CEO/Co-founder Conrad Parker was forced to resign from Zenefits and later fined approximately $500K; in the securities registration arena, where cryptocurrency startups Airfox and Paragon have each been fined $250K and further could be required to return to investors the millions raised through their respective ICOs; in the social media and privacy realm, where TikTok was recently fined $5.7 million for violating COPPA, or in the antitrust context, where tech giant Google is facing billions in fines from the EU.

Suffice it to say, regulation is not a low-stakes table game. In 2017 alone, according to Duff and Phelps, US financial regulators levied $24.4 billion in penalties against companies and another $621.3 million against individuals. Particularly in today’s highly competitive business landscape, even if your startup can financially absorb the fines for non-compliance, the additional stress and distraction for your team may still inflict serious injury, if not an outright death-blow.

The best way to avoid regulatory setbacks is to first understand relevant regulations and work to develop compliant policies and business practices from the beginning. This article represents a step in that direction, the fifth and final installment in Extra Crunch’s exclusive “Startup Law A to Z” series, following previous articles on corporate matters, intellectual property (IP), customer contracts and employment law.

Given the breadth of activities subject to regulation, however, and the many corresponding regulations across federal, state, and municipal levels, no analysis of any particular regulatory framework would be sufficiently complete here. Instead, the purpose of this article is to provide founders a 30,000-foot view across several dozen applicable laws in key regulatory areas, providing a “lay of the land” such that with some additional navigation and guidance, an optimal course may be charted.

The regulatory areas highlighted here include: (a) Taxes; (b) Securities; (c) Employment; (d) Privacy; (e) Antitrust; (f) Advertising, Commerce and Telecommunications; (g) Intellectual Property; (h) Financial Services and Insurance; and finally (i) Transportation, Health and Safety.

Of course, some regulations may touch on multiple regulatory areas, for example, the “Fair Credit Reporting Act” is a law ultimately about privacy, but it impacts many financial and employment-related services as well. Certain laws may therefore be cross-listed in more than one regulatory area. Also, since we can’t look at every U.S. state and city, this article will focus primarily on the federal and California state laws.

After you focus on the particular regulatory areas that may implicate your business, next reference the short quotations and links to relevant primary and secondary sources below, then work to identify the specific compliance risks you face. This is where other Extra Crunch resources can help. For example, the Verified Experts of Extra Crunch include some of the most experienced and skilled startup lawyers in practice today. Use these profiles to identify attorneys who are focused on serving companies at your particular stage and then seek out any further guidance you need to address the regulatory matters pertinent to your startup.

With that as context, the Startup Law A to Z – Regulatory Compliance checklist is below:

Taxes

Federal

Federal Employer Number

Income Tax

Estimated Taxes

Self-Employment Tax

Employment Taxes

Excise Tax

Internal Revenue Code Rule 409A

Internal Revenue Code Section 422 and 423

Internal Revenue Code Section 83(b)

California

State Employer Number

Foreign Qualification

Franchise and Income Tax

Sales and Use Taxes

Special Taxes and Fees

Securities

Federal

Securities Act of 1933

Securities Exchange Act of 1934

Jumpstart Our Business Startups Act of 2012

Internal Revenue Code Rule 409A

Internal Revenue Code Section 422 and 423

Internal Revenue Code Section 83(b)

California

Corporate Securities Law of 1968

Employment

Federal

Affordable Care Act

Age Discrimination in Employment Act of 1967 (ADEA)

Americans with Disabilities Act of 1990 (ADA)

Civil Rights Act of 1964

COBRA Requirements

Employee Retirement Income Security Act of 1974 (ERISA)

Equal Pay Act of 1963

Federal Fair Labor Standards Act (FLSA)

Genetic Information Nondiscrimination Act

Immigration Reform and Control Act

National Labor Relations Act

Pregnancy Discrimination Act

California

Disabled Persons Act

Fair Employment and Housing Act

Family Rights Act

New Parent Leave Act

Unruh Civil Rights Act

Worker’s Compensation Insurance (Cal. Labor Code Section 3700)

Privacy

Federal

Federal Trade Commission Act

Children’s Online Privacy Protection Act (COPPA)

Health Insurance Portability and Accountability Act (HIPAA)

Health Information Technology Act (HITECH)

Fair Credit Reporting Act

Gramm-Leach-Bliley Act

California:

Consumer Privacy Act of 2018

Online Privacy Protection Act of 2003 (Cal-OPPA)

Confidentiality of Medical Information Act

Consumer Credit Reporting Agencies Act

Electronic Eavesdropping, Invasion of Privacy Act

Insurance Information and Privacy Protection Act

Privacy Rights for California Minors in the Digital World

Shine the Light Law

Student Online Personal Information Protection Act

International:

GDPR

Antitrust

Federal

Clayton Act

Robinson-Patman Act

Sherman Act

California

Cartwright Act

Advertising, Commerce and Telecommunications

Federal

Federal Trade Commission Act

Clarifying Lawful Overseas Use of Data Act

Communications Decency Act, Section 230

Computer Fraud and Abuse Act

Controlling Assault of Non-Solicited Pornography & Marketing Act (CAN-SPAM)

Electronic Communications Privacy Act

Export Administration Regulations

Restore Online Shoppers’ Confidence Act

Telecommunications Act

California

Consumers Legal Remedies Act

Unfair Competition Law

Comprehensive Computer Data Access and Fraud Act

Intellectual Property

Federal

Anticybersquatting Consumer Protection Act

Digital Millennium Copyright Act

Defend Trade Secrets Act of 2016

Economic Espionage Act of 1996

Electronic Communications Privacy Act of 1986 (ECPA)

Prioritizing Resources and Organization for Intellectual Property Act of 2008

Lanham (Trademark) Act of 1946

Leahy-Smith America Invents Act

No Electronic Theft Act

Patent Act

California

Uniform Trade Secrets Act

Financial Services and Insurance

Federal

Gramm-Leach-Bliley Financial Modernization Act

Dodd-Frank Act

Fair and Accurate Credit Transactions Act

Fair Credit Reporting Act

Financial Industry Regulatory Authority

Sarbanes-Oxley Act of 2002

Unlawful Internet Gambling Enforcement Act of 2006

California

Financial Information Privacy Act

Song-Beverly Credit Card Act of 1971

Transportation, Health & Safety

Federal

Department of Transportation Act

Federal Food, Drug, and Cosmetic Act

California

Confidentiality of Medical Information Act

Public Utilities Act

Before diving into further detail, it may be helpful for some readers to note the distinction between a law and a regulation. Simply put, regulations provide more detailed direction on how certain laws should be followed. So regulations are not technically laws, but they carry the force of law (including penalties for violation), since they are adopted by governmental agencies under authority granted by statute. Beyond that, understanding how laws and regulations are actually enacted is helpful to illustrate the extent to which the process is politically driven.

In the U.S., a bill must first pass both legislative branches of government, then, if signed by the executive branch, it will be codified in statute as law (Schoolhouse Rock anyone?). Once codified, the legislative branch will authorize the relevant executive department or agency to determine whether specific regulations are necessary to give the law effect. If so, those executive departments or agencies will determine what further rules are needed, and in turn, work to enforce them.

At the federal level, for example, proposed regulations are developed first through a “Notice of Proposed Rulemaking,” listed in the Federal Register and filed in the corresponding executive agency’s official docket (available at Regulations.gov). This affords the public an opportunity to comment on the regulations. After receiving comments, the filing agency may revise the proposed regulation before final rules are issued, which again will be published in the Federal Register and then filed in the agency’s official docket at Regulations.gov, before they are codified in the Code of Federal Regulations (CFR).

At nearly every step in this process then, institutions, government, and interest groups are working – sometimes at cross purposes – to shape what the law will be and how it will impact your startup.

The Startup Law A to Z – Regulatory Compliance reference guide is below:

A. TAXES

source https://techcrunch.com/2019/04/04/startup-law-a-to-z-regulatory-compliance/

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bananaipindia · 5 years ago

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Indian Patent Agent Examination likely in June 2020, VMware, Apple and Broadcom found guilty of patent infringement and other patent news

New Post has been published on https://www.bananaip.com/ip-news-center/indian-patent-agent-examination-likely-in-june-2020-vmware-apple-and-broadcom-found-guilty-of-patent-infringement-and-other-patent-news/

Indian Patent Agent Examination likely in June 2020, VMware, Apple and Broadcom found guilty of patent infringement and other patent news

In this week’s Patent News – Indian Patent Agent Examination 2020 likely to be held in June this year; Federal Jury finds VMware guilty of patent infringement, awards $236 Million as damages to Densify; Caltech awarded $1.1 Billion in patent infringement case against Apple and Broadcom; UK Government says Brexit will have no implications on IP system during the transition period; EPO publishes grounds for rejecting two patent applications that designated a machine as an inventor.

Indian Patent News

Indian Patent Agent Examination 2020 likely to be held in June this year

The Indian Patent Office issued a public notice on 31st January 2020 indicating the Office of the Controller General of Patents, Designs and Trademarks (CGPDTM) is likely to conduct the Patent Agent Examination in June 2020.The notice also reads that further information will be made available on finalizing the schedule and certain other requirements. You may click here to access the official public notice.

Patent Disputes / Infringements / Settlements / Licensing

Federal Jury finds VMware guilty of patent infringement, awards $236 Million as damages to Densify

A Federal jury in Delaware has ruled in favor of Densify, a software company based in Canada, and has awarded $236 Million by way of damages in a patent infringement lawsuit involving VMware. Densify had instituted a case in April, last year, alleging that VMware’s products – vRealize Operations Manager (vROps 7.0/7.5) Predictive DRS had infringed two of its patents, namely, US8209687 and US9654367. In addition to this, Densify had also stated that the latter had used the name “Densify” while referencing its own products. On Friday, last week, the jury announced its verdict before the Judge at the U.S District Court for the District of Delaware and held that VMware was guilty of patent infringement. VMware, in its statement said, “While we appreciate and respect the judicial process, we continue to strongly believe that we do not infringe the patents asserted against us in this case, and intend to vigorously pursue all legal remedies that are available to us to prove that we are not liable here.”

Caltech awarded $1.1 Billion in patent infringement case against Apple and Broadcom

California Institute of Technology (Caltech) has been awarded $1.1 Billion in a patent infringement case against Apple and Broadcom. The University, in 2016 had instituted a suit for patent infringement against the two tech giants in the Federal Court in Los Angeles, U.S.A. In its lawsuit, Caltech had alleged that the tech giants had infringed four of the University’s patents relating to Wi-Fi data transmission. Four years later, a jury has found the companies guilty of patent infringement.

The jury has awarded Caltech a sum of $1.1 Billion where Apple is bound to pay $837.8 Million and Broadcom is liable to pay $270.2 Million, as damages. According to reports, Apple has confirmed that the company will file an Appeal.

International Patent News

UK Government says Brexit will have no implications on IP system during the transition period

Following the ratification of the Withdrawal Agreement by the EU and U.K, EU law will continue to operate in the UK until 31st of December 2020. The Intellectual Property (IP) system will continue as it is during the transition period, i.e., 1st February 2020 to 31st December 2020. The official website of the U.K Government also confirms that no disruptions will be caused to IPO services. At the end of the transition period, the IPO will convert almost 1.4 million EU trademarks and 700,000 EU designs to comparable UK rights, and these will come into effect from 1stof January 2021.

Brief implications of Brexit on Patents & Designs have been provided below for our readers’ quick reference:

Registered Community Designs (RCD)

The UK will remain part of the EU registered community design system throughout the transition period. Comparable UK designs will be created at the end of the transition period under the terms of the Withdrawal Agreement.

Businesses, organizations or individuals that have applications for an RCD which are ongoing at the end of the transition period will have a period of nine months from the end of the transition period to apply in the UK for the same protections.

Unregistered designs

Unregistered community designs arising before the end of the transition period will continue to be protected in the UK for the remainder of their three-year term.Designs disclosed in the UK after the end of the transition period may be protected in the UK through the supplementary unregistered design

International registrations designating the European Union

International registrations for trademarks and designs protected via the Madrid and Hague systems and those which designate the European Union before the end of the transition period will continue to extend to the UK after 31 December 2020.

Rights of Representation

UK legal representatives will continue to have the right to represent clients before the EU Intellectual Property Office (EUIPO), in cases that are ongoing at the end of the transition period.

Patents

An applicant may apply for European patent through the U.K Patent office or direct to the European Patent Office (EPO) to protect the patent in more than 30 countries in Europe, using the (non-EU) European Patent Convention (EPC). As the EPO is not an EU agency, leaving the EU does not affect the current European patent system. Existing European patents covering the UK also remain unaffected.

You may click here to access the official post on the Govt. U.K website.

EPO publishes grounds for rejecting two patent applications that designated a machine as an inventor

In the month of December, last year, the EPO refused two European Patent Applications numbered EP 18275162 and EP 18275174 which designated a machine as an Inventor. The applications named a machine called “DABUS” as the Inventor and described it as – “a type of connectionist artificial intelligence.” The applicant stated that they acquired patent rights from the inventor by being its “successor in title.” After considering the interpretation of the legal framework of the European patent system, the EPO refused the application on the grounds that the inventor was not a natural person. The Office has emphasized on the fact that the internationally accepted standard appears to accept the term ‘inventor’ as a natural person. The Office also states that it is essential for the inventor to have a legal personality to benefit from the rights derived from the patent.

You may click here to access the Grounds for EPO decision – EP 18 275 163 and EP 18 275 174.

Source: https://www.epo.org/news-issues/news/2020/20200128.html

Authored and compiled by Vibha Amarnath

About BIP’s Patent Attorneys

The patent news bulletin is brought to you by the patent division of BananaIP Counsels, a top patent and IP firm in India. Led by Senior Partners, Somashekar Ramakrishna, Nitin Nair and Vinita Radhakrishnan, BIP’s Patent Attorneys are among the leading patent practitioners in the country. They work with clients such as Mahindra and Mahindra, Samsung, HCL, Eureka Forbes, to name a few. The patent attorneys at BIP have strong technical and legal expertise in areas such as IT/Software, Artificial Intelligence (AI), Machine Learning, Data Analytics, Electronics and Telecommunication, Mechanical, Automotive, Green Energy, Traditional Medicine and Bio/Pharma domains. The firm is a first choice for clients looking for support in patent filing, prosecution, management and strategy in India, and across the world.

This weekly patent news bulletin is a part of their pro bono work, and is aimed at spreading patent awareness. You are free to share the news with appropriate attribution and backlink to the source.

If you have any questions, or need any clarifications, please feel free to write to [email protected]

#BREXIT #Apple #Artificial intelligence #Broadcom #Caltech #CGPDTM #EPO #EUIPO #Indian Patent Office #industrial designs #Machines are not inventors #Patent Agent Examination #patent infringement #UKIPO #VMware

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epchapman89 · 6 years ago

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Intellectual Property In Coffee: A Global Game Of Clones

I remember when I visited my extended family in Taiwan in 1998. Lining the streets were vendors doling out the latest movie on DVD, before it even left the theater. A few years later, the girls around school were all sporting bags with the Chanel-style C patterned around them. I bought a pair of C-patterned heels for NT$100 (US$3 at that time). They were such a steal and people fawned all over them.

What I didn’t know was that pirated movies and counterfeit products were intellectual property rights violations, and that I was enabling the market.

When I first decided to write this feature series [READ PART ONE HERE] I had wanted to explore cultural influences in intellectual property (IP). Instead, it evolved into also looking at how developing countries manage IP and how the internet influences global coffee culture. Every country has a different approach to IP laws, and social media only makes access to other people’s ideas easier.

IP cases in coffee that play out on the international stage tend to be dominated by large corporations—that is, those entities that have the resources to take things worldwide. Patent registrations protect companies, but they also expire after a set number of years. In 1976, Nestlé filed its first patent for its single-pod Nespresso system and subsequently filed at least 1700 more patents. In the US, Keurig Green Mountain filed its first patent for K-Cup pods in 1992. For both companies, the patents began to expire in 2012, opening the doors to new companies and cheaper pods.

Most specialty coffee companies don’t seem to care much about patent wars, despite some having been recently purchased by larger entities like JAB Holding Company or Nestlé. But as specialty coffee—and its accoutrement—continues to be a growing industry, new coffee equipment is constantly being invented. Having ready access to social media only means the newest ideas can get knocked off easier than ever.

The PUSH tamper, created by UK-based Clockwork Espresso, is one example of new coffee equipment that’s been duplicated around the world. In 2015, when soon-to-be United Kingdom Barista champion Maxwell Colonna-Dashwood pulled out a strange, hockey-puck-like tamper on the world competition stage, the audience was buzzing. The shape was unlike any tamper on the market and could conceivably solve pressure consistency issues that occur from one tamp to the next. As expected, similar products began appearing on the world market soon after. When asked about them, the founder of Clockwork Espresso’s Pete Southern confirmed that they were unauthorized copies. “Yes, there are several replica products on the market that are produced without our permission,” he said via email.

Southern’s background is in biotech, where IP protections are common and respected, giving him a leg up on protecting his new product. “Working in this field means that I have direct experience of working with patents, litigation, enforcement, action, etc,” he said. “The coffee industry currently lacks this understanding of IP, but I think this will change over time.”

Southern plans on building an IP portfolio, which is a collection of IP registrations and assets that a company manages. He elaborated, “We will use this portfolio to protect our investment, in a strategic rather than reactive way.”

One common misconception he points out is that “people also don’t seem to realize that selling/distributing/marketing an infringing product without permission is just as illegal as manufacturing it.” On the flip side, patent owners are also able to license their technology, which can benefit the creation of new products without worrying about infringements.

In his paper “Intellectual Property Challenges for Developing Countries: An Economic Perspective,” Keith E. Markus, Professor of Economics at University of Colorado, Boulder, writes, “The costs of developing a system adequate for handling mere counterfeiting cases, let alone complicated patent disputes, can be substantial.” So while a developing country’s economy could be open to stronger IP laws, those laws lack teeth if no one is able to enforce them.

Furthermore, technology licenses are expensive and benefit those who hold the copyrights, mostly companies based in the US. Markus estimated a net inflow of $5.8 billion per year in licensing fees paid to US companies.

At the time of this writing, the Trump administration imposed tariffs on Chinese goods, which is in response to “alleged policies that help its native companies acquire the technology of US firms.” Tariffs are predicted to harm relations between the two countries, beginning with China imposing its own tariffs on US goods. To expand into the Chinese market, where specialty coffee is poised to grow in both consuming and producing sectors, some sharing of technology information is needed.

Barb and Doug Garrott are co-owners of Orphan Espresso, a Troy, Idaho company that designs and sells coffee grinders and accessories. They’ve had their “products directly purchased, and copied, sold on Amazon, and on eBay,” the Garrotts told Sprudge via email. Orphan Espresso’s OE Lower Bearing Upgrade Kit (for use with the Hario Skerton grinder), Ipanema Dosing Cylinder, and standard dosing funnels are all products they’ve seen directly copied by both small and large, multinational companies.

When the company was first starting out, applying for design patents was too costly for them. Reaching out to the companies that were copying its products only produced responses that pointed out the lack of a patent. The Garrotts learned that “the more successful, the faster it will be copied and if your R&D costs, or tooling costs are quite high, you may be copied before those costs are fully recovered.”

And if companies use overseas manufacturers, IP protection is key. The biggest mistake that the Garrotts have seen peers make, though not made themselves, is “collaborative manufacturing, where the overseas partner became a seller of the design, to the detriment of the original manufacturer—it was a costly mistake.”

Through a Western lens, it is easy to criticize some of this as outright stealing. In his book, “Trouble in the Middle: American-Chinese Business Relations, Culture, Conflict, and Ethics,” author Steven P. Feldman, Professor of Business Ethics at Case Western Reserve University, puts the viewpoint into perspective. In a Confucian society, value is placed in the collective rather than in the individual.

Feldman writes, “Rather than regarding invention as a private right, the Chinese regard public duplication of creative objects as the proper approach to the value of such objects because all creativity comes from a public repository and should contribute back to it.”

This belief in collectivism vs. individualism is at direct odds with IP, where assets and ideas are registered and fought over. China’s entry into the World Trade Organization (WTO) in 2001 meant that it had to agree to some basic IP laws. WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) establishes “minimum standards of protection and enforcement that each government has to give to the intellectual property held by nationals of fellow WTO members.”

Feldman says that market protection and stability is far more important to the Chinese government than IP enforcement. He writes: “The Chinese government is concerned that enforcement of IP could hinder economic development by blocking access to information and technology, allowing foreign firms who own the IP to dominate the China market and creating a trade imbalance that favors the West.”

International accords were written by developed nations and have been criticized as being a barrier for developing nations’ growth. Feldman concludes, “The fact is that developing nations cannot compete with developed nations in most areas of IP.”

Technology’s Influences on Coffee Culture

In Vietnam, where Confucianism has a long history, coffee is both grown and consumed. Because the specialty coffee industry is newer, the values may not be as impactful as in other industries.

Sarah G. Grant, Assistant Professor in Cultural Anthropology at California State University, Fullerton, studies Vietnam’s cultural and economic policies in relation to the commodity coffee industry. In a written interview, Grant says the internet played a greater role in the industry than Confucianism. “The Vietnamese specialty coffee industry developed quite rapidly and I think the relative age, education level, and English language fluency has significantly shaped it,” she says. At the moment, Vietnamese specialty coffee professionals are collaborative and supportive of each other.

Social media has certainly played a role in intellectual property and design concepts. Being able to see what a well-known cafe abroad looks like without ever leaving your country offers up an opportunity to spark ideas close to home. Grant says, “A lot of these models put cafe design first—some of the best-known specialty cafes in Vietnam feel like walking into a cafe in LA, Berlin, or San Francisco and I think there’s something to be said for that design influence.”

Interior design inspiration is one thing, but images, logos, and other such copyrighted or trademarked materials can be found floating across international waters. Brian W. Jones, a designer and brand consultant to coffee companies, shared a few examples of this with Sprudge via email.

“Poster designs that I’ve made have been turned into stamps that people use like a logo on their takeaway cups, paintings on their walls, [designs on] their own t-shirts,” Jones says. Most of the violators are small businesses in faraway countries, and pursuing action is often expensive.

When designing for a client, Jones retains only the right to display work in a portfolio. However, he’s observed a client’s branding pirated to a country distant from the original business. “I worked on a [cafe] branding project in London that had [the company’s] entire name and logo ripped off in Seoul,” Jones says. “There was signage and printed cups and engraved tables, all with this logo I designed for a different company.”

What is more concerning—and why many of these protections exist in the first place—is when a stolen name or trademark begins to be confused with the original holder. This tends to dilute the brand and can be damaging to the company. Jones says, “People who would travel to Seoul began to think the London-based company had expanded to South Korea.”

UK-based shop Kaffeine is no stranger to having its designs and name used outside of its home country. Peter Dore-Smith, founder and director of Kaffeine, wrote via email that despite having the logo and name registered across the EU, “We now have ‘branches in Russia, Jakarta, Texas, Budapest, Penkridge (UK) and the latest is in Crete. There may be even one in Sydney.’”

For Dore-Smith, a friendly reach out comes first. If it fails, then the decision to pursue legal action comes down to where their marks are protected and if it’s worth the cost. “The cost of getting a solicitor to write a letter is about £300 each letter, then following up and chasing, you are looking at around £1,000,” he says.

Farah Bhatti, shareholder at business law firm Buchalter, advises her clients to protect their mark in countries where they plan on selling their products. “Because unlike the US, where it’s a first-to-use country… a lot of other countries are first-to-file countries,” she says. In cases where companies have registered her clients’ trademarks, she ends up filing oppositions against them. Obtaining the rights ends up costing $20,000 when a registration could’ve been only $3000 to $5000.

IP is immensely complicated, especially when you’re expanding internationally. Every country has its own management system, copycat products abound in every industry, and the Internet has only made it easier than ever to adopt ideas.

If success is in your plans, Dore-Smith says, then you should get protection for your brand. Design can be inspired by another shop, but not by a duplication of its marks. “Making a direct copy of something is just stupid and taking the piss,” he adds.

The coffee industry has more challenges ahead in navigating IP in international waters and it may take a few high-profile cases to spur companies into taking protective action.

The final part of this series will focus on IP as it specifically relates to the coffee plant itself in origin countries. Missed the first installment? Click here.

Jenn Chen (@TheJennChen) is a San Francisco–based coffee marketer, writer, and photographer. Read more Jenn Chen on Sprudge.

The post Intellectual Property In Coffee: A Global Game Of Clones appeared first on Sprudge.

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mrwilliamcharley · 6 years ago

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Intellectual Property In Coffee: A Global Game Of Clones

What I didn’t know was that pirated movies and counterfeit products were intellectual property rights violations, and that I was enabling the market.

Technology’s Influences on Coffee Culture

In Vietnam, where Confucianism has a long history, coffee is both grown and consumed. Because the specialty coffee industry is newer, the values may not be as impactful as in other industries.

The coffee industry has more challenges ahead in navigating IP in international waters and it may take a few high-profile cases to spur companies into taking protective action.

The final part of this series will focus on IP as it specifically relates to the coffee plant itself in origin countries. Missed the first installment? Click here.

Jenn Chen (@TheJennChen) is a San Francisco–based coffee marketer, writer, and photographer. Read more Jenn Chen on Sprudge.

The post Intellectual Property In Coffee: A Global Game Of Clones appeared first on Sprudge.

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michaelfallcon · 6 years ago

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Intellectual Property In Coffee: Imitation Is No Longer Flattering

“Imitation is the sincerest form of flattery.”

Writer Charles Caleb Colton must have never met an intellectual property lawyer. But when does imitation become outright copyright or trademark infringement?

Intellectual property (IP) covers a lot of ground and is found in every aspect of the coffee value chain. From patenting coffee makers to trademarking blend names to granting plant breeders’ rights, IP’s reach is far and influential in coffee history.

In this three-part series, we’ll take a look at several angles of IP as it shows up in the coffee industry. To begin with, we’ll take a broad look at coffee IP’s international history and its most commonly seen cases. In the second part, we’ll explore how culture and social media blur the lines of influence and originality. And in the final piece, we delve into IP on a farm level.

Patents

IP’s global history began with the establishment of patent law in England in 1624, with the Statute of Monopolies. Two centuries later in Italy, Angelo Moriondo would be granted a patent for “New steam machinery for the economic and instantaneous confection of coffee beverage.” The new machine, combining water and steam, was presented at the Turin General Exposition in 1884 and was the precursor to the espresso machine.

Another notable mark in coffee patent history is the German invention of the first dripper and filter. In 1908, Melitta Bentz punctured a hole in the bottom of a pot, lined it with notebook paper, and created a way to filter out coffee grounds. The patent, “Filter Top Device lined with Filter Paper,” led to the Melitta company’s birth and the beginning of many new pour-over devices. Trend watchers will not be surprised to learn that every year, there continue to dozens of companies claiming to invent a new device for pouring water over coffee.

Nowadays, patents filed in one country may or may not be simultaneously filed in another country. While efforts have been made to make international filings easier and minimum requirements do exist for those who participate in Patent Cooperation Treaty, every country still determines and executes its own laws.

The US’s switch in 2013 from a “first-to-invent” system to a “first-inventor-to-file” system to match the rest of the world may see ripple effects in US coffee technology innovation. It no longer matters if you were the first to invent a new component in a coffee roaster. If someone else was working on a similar component and has the resources for a patent attorney, it becomes a race to file.

Trademarks

Patenting inventions is only one portion of IP. Trademark protection, which covers name and logo usage, is another major aspect and affects every coffee company.

When Minnesota’s Dogwood Coffee first began roasting, the company named its cold brew blend “Zamboni.” It was a love letter to their staff’s enjoyment of hockey and the machines that rule the rink. “We didn’t even make it through a full season before we received the cease-and-desist letter from [the] Zamboni [corporation],” says Dan Anderson, owner of Dogwood.

Luckily, Anderson was able to work out a licensing agreement and is now far more educated on the topic of IP. Looking back, he says the experience “really brought home the relevance of protecting your brand and trademarks. I think that definitely played a part in us figuring out our own protection.” Dogwood now goes through a thorough name vetting practice for each of their blends and subsequently registers the blend names as trademarks.

Blends take a lot of work and Anderson sees the trademark protection as a necessary step in the business process. “A lot of people can relate to how hard you worked to build knowledge of your company and your espresso blends,” he says. “Go ahead and take these steps to protect from potential confusion in the marketplace.”

It’s good business sense to research potential names before spending money on marketing and other collateral. Marshall Fuss, a California attorney specializing in the coffee industry, often advises his clients to be as unique as possible. “There’s a tendency for everybody to be looking at similar words. Perk this, drip that,” Fuss says. “The thing that I try to get across is that originality counts.” The more the name generically describes the product, like “cone dripper,” the less likely you’ll be approved for the trademark.

Once a trademark is registered, it’s still up to the business to enforce it. While it may seem daunting at first, says Nick Pearson, Financial Controller and General Manager at Dogwood, the company has been able to handle everything internally. Pearson has so far been able to handle infringements casually, first reaching out over email instead of going straight to a cease-and-desist letter. Most companies are understanding, but it becomes more difficult once a brand has invested in a name. He says, “Those are tougher and brutal for us because we don’t want to be the bad guy. But we also have to protect our brand.”

Copyrights

In the realm of copyright, issues of IP crop up frequently through day-to-day marketing efforts. Farah Bhatti, shareholder at US-based business law firm Buchalter, specializes in trademark prosecution and is the Chair of the firm’s Internet, E-Commerce, and Social Media Practice Group. Buchalter’s coverage includes all aspects of business law, including IP, and multiple industries. When asked about what she thinks are the major mistakes businesses make in operating online, Bhatti says the first one is “borrowing” images that are found online. She says, “People think, ‘I do a Google search, there’s an image there.’ [They think they] can just take it and use it.”

While the laws themselves are slow in incorporating new technology, Bhatti advises her clients based on analogies to when those laws were written. Before, a law would apply to magazines manipulating and republishing photos, she says, “Now it’s just cut and paste on a computer. But it’s still at the end of the day, the same thing. You’re taking somebody’s copyrighted material and you’re reproducing them without their authorization.”

The concept of using what you find on the internet and taking it is especially prominent on Instagram, where brands are often seen re-gramming other accounts. Without express permission from the original copyright holder, your regram with credit is still copyright infringement.

Bryan Schiele is known for his crisp and colorful images and is no stranger to having his images used without permission and/or credit. Schiele estimates he’s submitted over one hundred copyright infringement reports on Instagram over the last few years. “At one point I was seeing my photos used without credit or permission roughly a few dozen times a month,” says Schiele. Instagram’s guidelines clearly state copyright ownership as “if you take a photo, you generally own the copyright in that photo.” He no longer hesitates at reporting stolen, uncredited content. He says, “Since they didn’t have the courtesy to ask permission, I won’t ask their permission to have it removed.”

The other major mistake that Bhatti sees businesses make online is publicizing when a celebrity uses their products or services. While more often seen with apparel companies, cafes and product manufacturers have also seen their share of celebrity usage and fandom. For example, Alton Brown’s Road Eats tours is known for soliciting recommendations and visiting smaller specialty cafes around the US. Brown’s favoring of certain cafes has surely helped in their retail sales, but that doesn’t mean business owners have the right to post photos of Brown eating or drinking there. Right of publicity laws vary state to state in the US and cover commercial use of an individual’s identity. In some states, posting a photo without prior agreement with the celebrity can lead to a lawsuit.

When posting an image of a celebrity using their product, you not only have copyright infringement on the photo, but you also have right of publicity issues, says Bhatti. “You’re basically stating that a celebrity is endorsing your product even though they may not be. You’re putting words in their mouth.” As a business, she continues, “you have a different set of rules as opposed to an individual who doesn’t have a commercial basis behind their statement.”

Another common copyright violation is exceeding a license. Earlier this year, the owners of the Grumpy Cat brand were awarded £500k in a lawsuit against US coffee company Grenade for unauthorized usage of the cat’s photos. The original licensing agreement was for using the photo on the “Grumppuccino” iced coffee line, but Grenade exceeded its usage with roasted coffee and T-shirts.

IP through the filter of the coffee industry is undoubtedly a complex topic. When a coffee company begins operating across international borders, it may find that some countries are more lenient than others for trademark registrations. Your company’s name may be filed in another country by someone else, and you won’t be able to claim it without substantial resources.

Plants Have IP, Too

Innovation and IP protection in coffee are not limited to equipment manufacturers and roasters, but can even include coffee growers themselves. IP for plants is called plant breeders’ rights, which allow breeders to license out a variety to anyone they desire. In a Re:co Symposium talk on coffee technology, Hanna Neuschwander, Communications Director for World Coffee Research, compares the pace of innovation between coffee machines and plant breeders’ rights. A search for the phrase “coffee machine” in both the US’s and China’s public patent search systems resulted in 3352 patents registered since 1976. In comparison, the number of filings listed in the International Union for the Protection of New Varieties of Plants (UPOV) database for new coffee varieties was at a measly count of 36.

So what does the future of IP in coffee look like? It’ll surely be with an international lens. More entries into the market, and the globalization of social media mean that companies need to work harder to stand out. Imitation is no longer flattering.

This is part one of a three-part series—topics including how international IP applies to coffee, and IP specifically within coffee origin countries, will be further explored in upcoming features.

Jenn Chen (@TheJennChen) is a San Francisco–based coffee marketer, writer, and photographer. Read more Jenn Chen on Sprudge.

The post Intellectual Property In Coffee: Imitation Is No Longer Flattering appeared first on Sprudge.

Intellectual Property In Coffee: Imitation Is No Longer Flattering published first on https://medium.com/@LinLinCoffee

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centuryassociates · 7 years ago

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Free Webinar this Thursday, May 17! Intellectual Property in the Cannabis Industry

We have been counting down the days until this Thursday at 12pm PST, when Harris Bricken will present a free, lunch-hour webinar entitled “Intellectual Property in the Cannabis Industry.” Registrations for this webinar have been impressive to date, and we expect the number to continue to surge in the next 48 hours.

Protecting and monetizing intellectual property (IP) in the cannabis industry is an important but challenging step for most businesses. The market is highly dynamic and competitive, and in addition to state and local rules, federal law creates an unusual environment. Several cannabis businesses have established significant market share through the creation and leveraging of intellectual property. Others have been served demand letters or lawsuits because their branding allegedly infringes upon existing protected IP – whether owned by cannabis businesses or non-cannabis businesses. As a corporate cannabis law firm serving the marijuana industry since 2010, we have seen just about every possible scenario.

This webinar is designed to help you gain a high-level understanding of cannabis IP and how to use it. Vince Sliwoski will moderate a discussion by intellectual property attorneys Alison Malsbury, John Mansfield, and Mike Atkins, who will provide a detailed overview of what you need to know to protect your cannabis brand. The attorneys will cover topics such as the following:

Categories of goods and services eligible for IP protection

Federal protections available to cannabis businesses

The importance of copyrights, trade secrets, patents, and trademarks to your cannabis business

IP hurdles cannabis business owners frequently encounter

IP licensing, both within state borders and across state lines

How to avoid cannabis IP disputes, and what to do in the case of a dispute

Questions will be taken throughout the presentation. To register for this free webinar, please go here. We look forward to this discussion!

In the meantime, feel free to check out some of our other recent webinars, to get a feel for what to expect on Thursday:

What You Need to Know Now to Get Your California Cannabis License

Rights, Opportunities, and Responsibilities of Municipalities Regulating Cannabis

Litigation in the Cannabis Industry

Free Webinar this Thursday, May 17! Intellectual Property in the Cannabis Industry posted first on https://centuryassociates.blogspot.com/

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jodieshazel · 7 years ago

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Free Webinar this Thursday, May 17! Intellectual Property in the Cannabis Industry

Categories of goods and services eligible for IP protection

Federal protections available to cannabis businesses

The importance of copyrights, trade secrets, patents, and trademarks to your cannabis business

IP hurdles cannabis business owners frequently encounter

IP licensing, both within state borders and across state lines

How to avoid cannabis IP disputes, and what to do in the case of a dispute

Questions will be taken throughout the presentation. To register for this free webinar, please go here. We look forward to this discussion!

In the meantime, feel free to check out some of our other recent webinars, to get a feel for what to expect on Thursday:

What You Need to Know Now to Get Your California Cannabis License

Rights, Opportunities, and Responsibilities of Municipalities Regulating Cannabis

Litigation in the Cannabis Industry

from Canna Law Blog™ https://www.cannalawblog.com/free-webinar-this-thursday-may-17-intellectual-property-in-the-cannabis-industry/

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philipmgonzalez · 7 years ago

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May The LegalForce Be With You: California IP Firm Sues To Stop LegalZoom’s Unauthorized Practice Of Trademark Law

A California IP law firm today filed a lawsuit in federal court seeking to stop LegalZoom for what it alleges are the on-line company’s pervasive and unabated unauthorized practice of trademark law (UPL), in violation of the Rules of Professional Conduct, antitrust law, and state and federal unfair competition law, among other causes of action.

LegalForce RAPC Worldwide, P.C. (“LegalForce”), a Silicon Valley-based law firm, and its owner, Raj V. Abhyanker, a California patent attorney who developed the popular Trademarkia.com search engine and website, filed an 81-page complaint in the Northern District of California against LegalZoom, three of its attorney-owners, the State Bars of California, Texas, and Arizona, and the United States Patent and Trademark Office. See LegalForce RAPC Worldwide, P.C. et al. v. LegalZoom.Com, Inc., et al., 5:17-cv-07194-NC (N.D. Cal. Dec. 19, 2017). See Complaint-LegalForce-RAPC-v-LegalZoom The exhibits to the LegalForce complaint are linked here: Exhibits to LegalForce Complaint v LegalZoom

The complaint alleges that LegalForce has been the largest law firm filer of trademarks before the USPTO in each of the last five years. The firm employs over ten (10) attorneys who specialize in the practice of trademark law before the USPTO, operates a “robust” conflicts of interest checking system, and maintains a Lawyer Trust Account (IOLTA) for the protection of client funds. Moreover, LegalForce’s client communications are protected by the attorney-client privilege. Furthermore, because it is a law firm, LegalForce is prohibited by the Rules of Professional Conduct in every jurisdiction except the District of Columbia from co-ownership with non-attorneys; that prevents the Firm from raising venture capital and makes it more difficult for the firm to compete.

Then along comes LegalZoom, which insists it is not a law firm and does not provide legal services–including trademark related legal services.

Nonsense, alleges the complaint. LegalForce alleges that while LegalZoom is not a law firm and it employs non-attorneys, it is very much engaging in the practice of trademark law. The lawsuit contends that LegalZoom “eschews” the long-standing client protections provided by lawyers and law firms, and that LegalZoom is not authorized to practice law in any state and is not a registered or bonded legal document assistant under California law. Furthermore, for its trademark legal services, no client trust fund exists, lawyers are not supervising non-lawyers, and conflicts of interest are not checked.

The lawsuit also alleges that LegalZoom, unlike LegalForce (which incurs tremendous expenses to comply with its ethical responsibilities), has been able to escape regulatory scrutiny, at least with respect to its trademark preparation and related USPTO services. The complaint wants this to stop and wants LegalZoom to be required to abide by the same rules that LegalForce has abided by for years.

In fact, the complaint alleges:

LegalZoom has recently boasted that it has filed more than two-hundred fifty thousand (250,000) trademarks before the United States Patent and Trademark Office on behalf of customers. In addition, LegalZoom’s co-founder Brian P.Y. Liu admitted that he created LegalZoom with his co-founder to provide legal services.

The complaint further alleges that LegalZoom’s website’s disclaimer, in which it asserts that it is not a law firm and does not practice law, is “false and misleading” because LegalZoom is in fact providing such legal services and the entity has hired individual non-lawyers who are practicing law without a license. According to the complaint, LegalZoom engages in the unauthorized practice of trademark law by, among other things, employing non-lawyers who:

Consult with and advice applicants or registrants in contemplation of filing a TM application or application-related document;

Prepare and prosecute trademark applications;

Conduct pre-filing searches for potentially conflicting marks; and

Advise applicants on substantive trademark examination issues, such as the acceptability of specimens and the classification of trademark goods and services.

According to the complaint, further proof that LegalZoom engages in trademark UPL is its non-lawyer “peace of mind” service that “deceptively geo-targets” LegalZoom ads for audiences searching through browsers using Google AdWord tools for the term “trademark attorney”–which intentionally misdirects members of the public to non-lawyers, who then provide trademark-related legal advice and services. Since LegalZoom does not have to pay the overhead associated with a real law firm, the complaint alleges, it can afford to put more money into marketing–which seems to be paying off since it ranks at or near the top of any Google search for terms such as “trademark application”

The complaint alleges that the LegalZoom and its owners have caused monetary and non-monetary harm to LegalForce by engaging in unfair business practices, operating with a non-attorney owned corporate structure, and violating laws proscribing false advertising, professional negligence, breach of fiduciary duty, and the unauthorized practice of law.

Although LegalForce alleges that it considered adopting the LegalZoom no-lawyer business model–for obvious reasons, according to the complaint, since the firm could then put more money into marketing and less into employing attorneys and operating in accordance with the relevant ethics rules–LegalForce refuses to do so out of respect for, and concern of being accused of violating, the pertinent Rules of Professional Conduct (in the interest of full disclosure, the undersigned and other ethics attorneys have counseled LegalForce–a fact alleged in the complaint).

With respect to its antitrust claim, the complaint alleges:

Plaintiffs have been compelled to file this lawsuit because Defendants are illegally and unreasonably restraining trade in the market for federal trademark application legal services . . . . Specifically, LegalZoom is illegally and unreasonably excluding Plaintiffs from offering similar statements by its own public statements on YouTube [those statements include representations by LegalZoom’s CEO that “I can destroy innovation and disruption if i take two elements away #1 capital, and #2 a team . . . . [without such elements] . . . it will be impossible . . . for lawyers to compete with LegalZoom.

The complaint seeks unspecified monetary damages, attorneys’ fees, as well as declaratory and injunctive relief prohibiting LegalZoom and its owners from engaging in the practice before the USPTO in trademark matters.

from McCabe IP Ethics Law http://www.ipethicslaw.com/may-the-legalforce-be-with-you-california-ip-firm-sues-to-stop-legalzooms-unauthorized-practice-of-trademark-law/

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