Pattishall IP Blog

July 18, 2017

“Brandverbing Your Trademark.” Is that a good thing?

Filed under: Litigation, Trademark (General) — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:43 am

By Janet Marvel

Trademark lawyers get nervous when clients use their trademarks as verbs.  Using a trademark as verb, the lawyers say, might kill the trademark by making it the generic name for a type of product instead of a brand of the product.  But increasingly, modern businesses try to create “brandverbs” (e.g. “Bing and  Decide,” to use a rather ill-fated example).  They praise “brandverbs” as some of the best expressions of brand leadership.  In Elliott v. Google, Inc., 20178 WL 2655528 (9th Cir. June 14, 2017), Google got away with it, arguably because GOOGLE is one of the most famous trademarks in the world.  For many “mere mortal” brand owners, using a trademark as a verb is still risky and companies need to weigh the risk before doing or encouraging it.

In Elliott v. Google, a cybersquatter argued that “googling” to describe the act of looking for information via a search engine made GOOGLE generic, thus forfeiting legally protectable trademark status. The plaintiff contended that “verb use constitutes generic use as a matter of law.”  Interestingly, “the district court assumed on summary judgment that the majority of the public uses the verb “google” to refer to the act of “searching on the internet without regard to [the] search engine used.  In other words, it assumed that a majority of the public uses the verb ‘google’ in a generic and indiscriminate sense.”

However, the Ninth Circuit held that “verb use does not automatically constitute generic use.”  It then held that Elliott’s examples of allegedly generic use of “googling” were not persuasive because they referred to use of “google” as a verb for searching and not to the search engine itself.  Moreover, Google presented overwhelming evidence that GOOGLE was a brand name for a particular search engine, and not a generic term for the general class of search engines.  According to a survey, 93 percent of consumers recognized GOOGLE as a brand.

Trademark lawyers still typically recommend against “brandverbing” because it contributes to a slippery slope leading to a potential finding that a mark is generic.  Trademarks are proper adjectives.  They modify the generic name of a product, e.g. Band-Aid bandages, not Band-Aids, or Kleenex tissues, not Kleenex. The use of a term as a modifier encourages consumers to think that not all bandages are “Band-Aids,” for example.  Similarly, using a trademark as a verb leads consumers to think that, for example, any in-line skate can be used for “rollerblading,” and any photocopying machine can be used “to xerox.”  It is a short step to call all in-line skates “Rollerblades” and all photocopiers “Xeroxes.”

The bottom line is that you can “brandverb” if you think the marketplace rewards outweigh the legal risks, but you should think about the long term consequences, and talk to your lawyers about mitigating risks.

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

July 11, 2017

Buzz Kill: TTAB Reaffirms Prohibition on Medical Marijuana Registrations

Filed under: Trademark (General), TTAB — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:41 pm

By Jason Koransky

The USPTO has consistently refused registration of marks for goods and services related to the medical and recreational marijuana industries. The Trademark Trial and Appeal Board has unanimously affirmed these refusals. The rationale behind these rejections is that the applicants cannot have a bona fide intent to use the marks in commerce, as the distribution and sale of marijuana is illegal under the federal Controlled Substances Act (“CSA”). Even though medical marijuana is now legal in 29 states and the District of Columbia, and selling recreational marijuana is legal in five states, federal law supremacy bars the acquisition of federal trademark rights for most marijuana-related goods and services.

Yet this prohibition has not deterred businesses and individuals in this booming industry from trying to obtain registrations, and they often come prepared with creative arguments.

The TTAB rebuffed the latest argument brought by a medical marijuana provider in its June 16, 2017, precedential opinion in the matter In re PharmaCann LLC. Here, Oak Park, Illinois-based PharmaCann LLC attempted to obtain registrations for PHARMACANN and PHARMACANNIS for “retail store services featuring medical marijuana” and “dispensing of pharmaceuticals featuring medical marijuana.” This case was destined for an appeal to the Board, as there was no chance that an Examiner would allow a mark with these services to proceed to publication.

On appeal, PharmaCann advanced two arguments. The first mirrored one already rejected by the Board, namely, that because the Department of Justice (based on the 2013 Cole Memorandum) has not enforced the CSA in regard to medical marijuana, the federal government does not treat medical marijuana as illegal. The Board cited its decision in In re JJ206, LLC, 120 USPQ2d 1568 (TTAB 2016), in which it decided this exact issue, and held that the DOJ’s refusal to act does not provide a means to obtain a federal trademark registration.

The second argument was a new one. Congress in its recent Appropriations Acts has prevented the Department of Justice from spending money to stop states from implementing laws that authorize the use, distribution, possession, or cultivation of medical marijuana. PharmaCann argued that because of “Congress’ decision not to fund the Department of Justice to enforce the Controlled Substances Act against medical marijuana, it would make no sense and serve no purpose for the Board to take a different position in ruling on Applicant’s trademark application for medical marijuana.”

The Board rejected this argument. It cited a 2016 Ninth Circuit case, United States v. McIntosh, 833 F.3d 1163, in which the court held that the Appropriations Acts did not make medical marijuana legal under the CSA. Therefore, the Board found that PharmaCann’s applied-for services violated the CSA, and therefore were not eligible for federal trademark registrations.

While owners of medical and recreational businesses cannot get federal registrations for their core goods and services, they can still obtain some IP protections, such as federal registrations for ancillary goods (such as apparel other promotional goods), state registrations for marijuana goods and services, and copyright registrations for logos.

The Board’s decision in this matter is available at its website: http://ttabvue.uspto.gov/ttabvue/ttabvue-86520135-EXA-31.pdf.

 

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

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