Michael N. Cohen

El Chapo and his Trademarks

Just wrapped up an interview with Noticias 62 about Joaquin “Chapo” Guzman, the notorious drug lord who was recently captured, and trademark issues related to him believe it or not.  Evidently, his family has filed for several trademark applications in Mexico throughout the years, many of which have been rejected by the Mexican Institute of Industrial Property aka the Mexican trademark office.   The rejection was based on Mexico’s trademark law that prohibits the registration of trademarks that are contrary to morality and decency, namely that El Chapo signifies a person who is wanted by the authority for committing various crimes.  However, the Mexican trademark office did allow registration for some of the applications associated with some odd goods and services like “whips and saddlery” and “Christmas trees” among others.

The US has a similar basis for rejections of trademarks that are scandalous or disparaging.  Some of the most notable recent ones are the Redskins issue which I talk about last year and I believe is still ongoing, and the “Slants” trademark which was held to be disparaging but recently overruled and allowed registration by the Federal Circuit finding that the disparagement provision in that case would violate the Slant’s, an Asian rock band, first amendment right.  But with “El Chapo” it’s a bit different because we are talking about a nickname or possible surname if he decides to file for that.  Not sure if that would be held to be scandalous if his family decides to file in the US for similar goods and services as they did in Mexico.  The USPTO hasn’t been exactly consistent about these issues, but in one case an application for “Osama Bong Loadin” was rejected because “[a]ccording to the attached evidence from Google.com, the proposed mark OSAMA BONG LOADIN refers directly to Osama Bin Laden and is thus scandalous because Bin Laden’s actions are synonymous with his name”.

La Gadget Expo December 5th & 6th 2015

Michael Cohen of Cohen IP Law Group will be presenting a 30 minute lecture on IP issues on December 6th at the LA Gadget Expo.   We are also a Silver Sponsor of the LA Gadget Expo! They’re giving 50% off exhibitor fees to those of you who wish to exhibit (e-mail hello@lagadgetexpo.com for more information) and free admission for being a Cohen IP Law Group client. Use promo code ‘COHENIPLAW’ for complimentary admission to the event: https://www.eventbrite.com/e/la-gadget-expo-tickets-17334064654

LA Gadget Expo Cohen IP Law Group

We our happy to announce that Cohen IP Law Group, PC will be an exhibitor and speaker at the first LA Gadget Expo on December 5th and 6th, held at the Reef in downtown Los Angeles.  The LA Gadget Expo is a consumer show that will feature gadget enthusiasts and corporate buyers.  Michael Cohen will present a lecture on Sunday afternoon regarding intellectual property issues that many in the business face.  We are excited for the opportunity and look forward to meeting you.  For more information please go to the LA Gadget Expo website. 

Top Trademark Law Firm Cohen IP Law Group Ranked by IP Today Magazine

Cohen IP Law Group, PC is pleased to announce its inclusion in Intellectual Property Today’s 2015 list of “Top Trademark Firms.”  This marks the firm’s sixth time ranking in the list.  Intellectual Property Today is one of the legal industry’s leading intellectual property publications, focusing on legal issues in patent, trademark and copyright law.  Firms are ranked according to the number of U.S. trademark registrations issued in 2014 where the firm or individual attorney is listed as the legal representative on the registration.

Cohen IP Law Group, P.C. is a premier boutique intellectual property law firm specializing in complex trademark prosecution and litigation matters in addition to other intellectual property transactions and litigation. Our firm has litigated successfully against some of the largest law firms in the world at a fraction of the cost. Michael N. Cohen is highly regarded in the trademark community and has been interviewed by the BBC, The Wall Street Journal, and other news sources to discuss intricate matters of intellectual property.

Marijuana, Trademark Brand Protection for the Cannabis Business

The emerging U.S.cannabis industry is estimated of producing $10.2 billion in the next five years.  This is not entirely surprising as the road to legalization has already been paved withColoradoandWashingtonhaving legalized recreational use of cannabis, while a large number of other states includingCaliforniahave legalized it for medicinal use.  Meanwhile, the Federal government has not yet changed the classification of cannabis as a Schedule 1 substance under the Controlled Substance Act of 1970. The use, possession, sale, cultivation, and transportation of cannabis is still illegal under Federal law.

While the laws regulating marijuana related businesses the changed over the years, startups in cannabis industry have been hitting their stride, and even Wall Street has gotten into the game with several publically traded companies on the scene.  And while the direct industry participants such as dispensaries, processors, growers, and the sale of cannabis itself is at the core of the industry, the ancillary goods and services pose as its lucrative equal.  Just as with any business, intellectual property protection of the goods and services is critical.

Trademark Protection for Marijuana

US trademarks are registered with the United States Patent and Trademark (USPTO) at the federal level, which typically affords the strongest level of protection and enforcement in the US.  Not too long ago for a short period of time, applicants were able to receive issuance of a trademark from the USPTO, of their brand names for strains of cannabis and related goods and services.  However, that window has not only closed, but the trademarks that were previously registered were retroactively removed from issuance following the enactment of US federal laws prohibiting the use of marijuana.  At the current time, attempts to apply for trademarks with the USPTO for cannabis products are denied, mainly in view of the Controlled Substance Act (CSA), 21 U.S.C. ” 810-971.  The typical trademark office action rejection in view of the CSA usually includes language like this:

The CSA prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and marijuana-based preparations.  21 U.S.C. §§812, 841(a)(1), 844(a); see also 21 U.S.C. §802(16) (defining “[marijuana]”).  The CSA also makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].” 21 U.S.C. §863.

As a general guideline, there are some goods and services that fall outside the CSA, such as trademarks for seminars or conferences about marijuana as long as it does not touch upon the distribution or dissemination of how to acquire marijuana.  While the CSA poses a hurdle for most marijuana related trademarks, as stated above it may not in many circumstances.  In the current competitive landscape to obtain IP rights in the cannabis business, obtaining a federal trademark registration is beyond significant, so advice from experienced trademark counsel is worth its weight in gold to be deemed as a serious player in the industry.

Even if the opportunity for a federal registration is foreclosed, there may be other strategies such as the application of a trademark at the state level, while not as strong as a federal registration, still conveys advantages.

Other Forms of IP

In addition to federal or state/common law trademark protection, the US federal patent laws are available to cannabis related inventions without as much scrutiny of running afoul of federal statutes.  While some of the technology in the marijuana industry may be simplistic, there are several untapped areas from technological innovation that fall under the umbrella of utility or design patent protection.

 

StoreDot Quick Car Charger

More great technology coming out of Israel.  StoreDot already claims to have a smartphone charger that can charge a phone in 30 seconds.   Now the same Israeli startup is racing to develop a brand new, ultra-fast charger for electric cars.

 

 

 

 

 

 

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