Non-Traditional Marks

GRIP STUDIOS OBTAINS 3D LEFT HAND CONFIGURATION REGISTRATION

Application

Grip Studios applied for the configuration mark described as a 3D “configuration of a hand” for “musical instrument accessories, namely stands, instrument hangers” in Class 15. Drawing and specimen, respectively, to support the application are as follows:

Trademark image

 

 

hand design 2

Design Code

The USPTO assigned the design code 02.11.07 Arms, Fingers, Hands, Human hands, fingers, arms. A search of this design code along with Class 15 for musical instruments reveals the following designs:

hand design code 3

Office Action

The Examining Attorney issued an office action with the following objections (i) functional – “when the evidence shows that the design provides identifiable utilitarian advantages to the user”; (ii) non-inherently distinctive configuration – “product design can never be inherently distinctive as a matter of law; consumers are aware that such designs are intended to render the goods more useful or appealing rather than identify their source”; and (iii) modifications to the description of the mark.

Grip Studios explained that its mark is not functional, that is, the “goods are a guitar holder. The holder part of the product is not claimed as a feature of the mark. The design of a hand is designed around the functional portion of the product and has no functional purpose”; and the mark has acquired distinctiveness based on over 10 years of use in conjunction with “look for” advertising such as “marketing of the hand as a trademark to associate the hand design with the goods” and using the “tagline ‘hand made in Detroit’ with the term ‘hand’ highlighted …

Hand guitar card

to promote the association of Applicant’s hand design mark with Applicant as the source of these goods.”

 

Hand design 3

 

The original mark description, a 3D “configuration of a hand” was modified to a 3D “configuration of a left hand.”

The Examining Attorney accepted the response with the application approved for registration. A registration (U.S. Reg. No. 5694753) issued March 12, 2019.

Blog by: Mary B. Aversano
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GURGLEPOT OBTAINS REGISTRATION FOR 3D FISH PITCHER

Application

GurglePot applied for a fish-shaped pitcher described as a 3D “configuration of a fish-shaped container” in Class 21 for “Carafes; Ceramic sculptures, vases, vessels, bowls, plates and pots; Decanters; Flower vases and bowls; Holloware, namely, ceramic, porcelain, or earthenware water pitchers; Jugs; Pitchers; Vases; Watering pots.” Along with the application, GurglePot submitted the following as a drawing:

And the below as evidence of use:

 

Design Code Search

The USPTO assigned design codes: 03.19.24 – Stylized fish, whales, seals, sea lions, 03.19.25 Catfish, Other fish (this section includes basic fish), Piranhas, Salmon, Tuna, and 11.03.08 Pitchers, beverage.

A search of design code 03.19.24 and class 21 shows fish designs such as:

Mark ImageMark ImageMark Image Mark Image

Mark Image Mark ImageMark Image

03.19.25 and class 21 reveals other fish designs:

Mark ImageMark Image  Mark ImageMark Image

11.03.08 and class 21 reveals pitcher designs:

Mark Image  Mark Image Mark Image Mark Image

 

First Office Action – 2(d) objection in view of prior registration for fish-shaped pitcher

The Examining Attorney cited prior registration (U.S. Registration No. 3572583), shown top right of the design code search results and hereMark Image against GurglePot’s design Mark Image.

GurglePot replied by indicating that there is a consent agreement between the registrant, New Shreve, Crump & Low and GurglePot. Among other things, the parties agreed that there are “15 distinguishing material characteristics between the Gurgling Cod Pitcher [Registrant] and the GurglePot Pitcher.” Specifically, GurglePot in its reply to the USPTO stated:

  • There is a signed consent agreement between the applicant and the cited prior registrant, which complies with TMEP 1207.01(d)(viii) and the Federal Circuit cases cited therein.
  • The generalized, open-ended, imprecise scope of alleged similarity in the trade dress would grant the existing registrant exclusivity over all pitchers shaped like a vertical curved fish – an exclusivity which the registrant does not possess in the marketplace – thereby contravening the U.S. Supreme Court’s holding on product design trade dress in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000).
  • The applied-for mark is significantly different in appearance, commercial impression, and marketing channels from the cited registered.”

And indeed photographs of the products do show many differences:

Shreve Crump & Low Accents | Shreve Crump & Low Gurgling Cod Pitcher Read | Color: Green | Size: Os Medium GurglePot Gurgling Fish Water Pitcher Aqua

 

Second Office Action – drawing requirements

The Examining Attorney agreed to accept the consent agreement but issued another office action. This objection related to the drawing:

“In addition to these drawing requirements, applicant must also submit a clear and concise description of the mark that does the following:

(1) Indicates that the mark is a three-dimensional configuration of the goods or their packaging or of a specific design feature of the goods or packaging;

(2) Specifies all the elements in the drawing that constitute the mark and are claimed as part of the mark; and

(3) Specifies any elements which are not part of the mark and indicates that the matter shown in broken or dotted lines is not part of the mark and serves only to show the position or placement of the mark.”

Applicant replied with an updated description of the mark, “The mark consists of a three-dimensional configuration of a fish-shaped container. All of the elements in the drawing are claimed as part of the mark. The heavier solid lines are contour lines, which define a form or an edge of an element of the design; the lighter solid lines are used to show depth and distance in a two-dimensional drawing of the three-dimensional object. The drawing does not include any broken or dotted lines” and an updated drawing:

 

 

Third Office Action – insufficient evidence of acquired distinctiveness

The Application was approved for publication but withdrawn because of “insufficient evidence of acquired distinctiveness pointing to the configuration design as a source of goods.” Specifically, the Examining Attorney stated: “The evidence, while plentiful, does not  point to the fish shape of the goods; rather, it touts the ‘gurgling’ effect of the ceramic pitcher.  The goods are primarily branded under the GURGLE POT name, and not the actual configuration.” The Examining Attorney is referring to “look for” advertising that helps bolster an applicant’s claim that its configuration design is a source indicator (e.g., look for the fish-shaped pitcher).

GurglePot provided further evidence of use with several comments from third parties mentioning the fish configuration:

“whimsical and fun fish shaped gurgle pot”

“Add some whimsy to your dinner table with a Gurgle Pot. The fish shaped pitcher …”

“The gurgle pot is a brightly coloured fish-shaped pot …”

 

Registration

Based on greater than 5 years of use and the additional evidence of use referring to the fish shape, the application was again approved for publication with a registration (U.S. Reg. 5754251) issuing on May 21, 2019.

 

Interesting notes about this application

1) It is unusual to overcome a likelihood of confusion citation with a consent agreement. That is, it is not a given that a consent agreement will be accepted. There are specific criteria that must be met and the USPTO can and does reject these agreements.

2) To support acquired distinctiveness, the Examining Attorney requested “look for” advertising to support GurglePot’s configuration application. See TMEP §1212.06(b) Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1723 (TTAB 2010) (finding absence of ‘look for‘ advertisements damaging to attempt to demonstrate acquired distinctiveness of proposed configuration mark).

 

Blog by: Mary B. Aversano
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Good News! USPTO Issues Examination Guide 1-19 to Update Handling of Cannabis and Cannabis-Related Goods and Services in View of the 2018 Farm Bill

I.  Introduction

As noted in the April 23, 2019 blog, US trademark applications that “identified goods or services involv[ing] the sale or transportation of a controlled substance or drug paraphernalia in violation of the Controlled Substances Act (“CSA”) … would be a basis for issuing an inquiry or refusal.” TMEP §907.  Cannabis products have been considered to contain a controlled substance.

The 2018 Farm Bill (“Farm Bill”) removes “hemp” from the CSA’s definition of marijuana, which means that cannabis plants and derivatives such as CBD that contain < 0.3% THC on a dry-weight basis are no longer considered to be controlled substances under the CSA (“hemp derived CBD/THC goods”). The USPTO issued an examination guide on May 2, 2019 to clarify the procedure for examining marks identifying hemp derived CBD/THC goods and services.

II.  Examination of marks for goods containing cannabis

The Farm Bill potentially removes the CSA as a grounds for refusal of registration, but only if the goods are derived from “hemp.”

December 20, 2018 and Onward:

  • Cannabis and CBD derived from marijuana still violate federal law, and such applications will still be refused registration regardless of the filing date.
  • For applications covering hemp derived CBD/THC goods, the identification of goods must specify that the goods contain < 0.3% THC.

Pre-December 20, 2018: Applicants will have the option of amending the application as follows:

  • Request to amend the filing date of the application to December 20, 2018. The request must specifically state that the change is authorized and there is a valid filing basis.
  • Applications originally based on use of the mark are required to be amended to intent-to-use.
  • Goods must be amended to specify that the CBD or cannabis products contain < 0.3% THC.

Caveat: Even if the goods in the application are legal under the CSA, not all are lawful following the Farm Bill. The Farm Bill explicitly preserves the FDA’s authority to regulate products containing cannabis or cannabis-derived compounds under the Federal Food Drug and Cosmetic Act (“FDCA”). Products such as CBD and hemp derived products undergoing clinical investigations without approval by the FDA violates the FDCA. Therefore, registration of marks for foods, beverages, dietary supplements, or pet treats containing CBD, even if derived from hemp, will still be refused as unlawful under the FDCA.

III.  Examination of marks for services involving cannabis production

If the services involve cannabis that is “hemp” containing < 0.3% THC (“hemp derived services”), the applications will be examined for compliance with the Farm Bill. Applicants refused registration under the CSA will have the same options outlined in Section II., above.

For applications that recite hemp derived services involving the cultivation or production of cannabis, the examining attorney will also issue inquiries about the applicant’s authorization to produce hemp.

  • The Farm Bill requires hemp to be produced under license or authorization by a state, territory, or tribal government in accordance with a plan approved by the US Department of Agriculture (“USDA”) for the commercial production of hemp. Until a new plan and regulations are approved by the USDA, the Farm Bill directs that states, tribes, and institutions of higher education may continue operating under authority of the 2014 Farm Bill until 12 months after the USDA establishes the new plan and regulations.

IV.  Conclusion

The good news is that the USPTO has a mechanism for handling hemp derived CBD/THC goods and services pre and post December 20, 2018. This will allow certain applicants to salvage applications that meet the requirements of the Farm Bill, in particular, goods and services involving CBD or cannabis products containing < 0.3% THC.

On the flip side, the FDA still retains authority to regulate products containing cannabis or cannabis-derived compounds undergoing clinical investigation. Consequently, registration of marks for foods, beverages, dietary supplements and pet treats containing CBD, even if derived from hemp, will still be refused registration.

Blog by: Mary B. Aversano
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CANNABIS IS BIG BUSINESS IN CALIFORNIA AND OTHER STATES BUT AT THIS POINT TRADEMARK REGISTRATION IS PROBLEMATIC

Barneys opens an upscale head-shop in Beverly Hills

“The new high-end head-shop concept that opened inside Barneys New York’s Beverly Hills flagship … [is] a high-profile harbinger of where cannabis related retail – and most likely the luxury department store space – is headed in the era of legal marijuana.” Los Angeles Times article, April 7, 2019 Cannabis on the high end, P4, by Adam Tschorn (“Cannabis on the high end, P4”).

high end photo

Photograph from https://lacannabisnews.com/why-barneys-high-end-head-shop-may-be-the-future-of-cannabis-related-retail/.

The shop “is elegantly appointed and stocked with a range of upscale smoking accessories such as hand-crafted stash jars from Siemon & Salazar; imported French rolling papers by Devambez (a gift set, complete with matchbooks, a rolling tray and a vermeil joint-packing tamper, will set you back a cool $8,850); functional jewelry (necklaces from Good Art Hlywd that double as vape-pen lanyards and a lip-shaped Carole Shashona ring that converts into a stylish joint holder); hemp-derived CBD beauty and wellness products; and an assortment of vintage Hermès and Gucci ashtrays.” Cannabis on the high end, P4.

Organically luxurious purple, green and blue fluorite gemstone pipes by Jan Leslie sold out  within days of their debut at The High End, in the Beverly Hills outpost of Barneys New York. "Fluorite has a long healing tradition," Leslie says. "Many healers use it to help access intuition and cultivate wisdom."

Jan Leslie Pipe (https://www.forbes.com/sites/kyleroderick/2019/03/31/gem-trend-gemstone-pipes-by-jan-leslie-debut-in-the-high-end-at-barneys-beverly-hills/#4058cb5b5456).

French rolling papers by Devambez (https://devambez.com/).

There is also “an on-site representative from Beboe, the Los Angeles-based luxury-level cannabis brand and partner on the project.” The representative “will explain the company’s products to the canna-curious and help him or her place an order for home delivery.” Cannabis on the high end, P4.

The article further notes that “[n]on-medical cannabis use has been legal … [in California] since the November 2016 passage of Proposition 64 (it remains illegal under federal law), and a January forecast by New Frontier Data projects that total statewide cannabis sales – estimated at $2.5 billion in 2018 – will nearly double (to $4.9 billion) by 2025.” This will have a “retail and cultural ripple effect” similar to “[w]hen MedMen made … [cannabis dispensaries] a brightly lit, inviting sea of blond wood more like Starbucks than the dicey dope dens of old …” This “signifies that cannabis doesn’t have to hide under the rug anymore …” Cannabis on the high end, P4.

Trademark Registration In the United States

Status

In the United States use and trademark registration of cannabis products and services is complicated. Cannabis remains illegal at the federal level, and, consequently, a federal trademark registration is not available. Separately, 33 states allow cannabis for medicinal purposes with 10 states (Alaska, California, Colorado, Maine, Massachusetts, Michigan, Nevada, Oregon, Vermont, Washington, and Washington DC) also allowing cannabis for recreational use (see https://medicalmarijuana.procon.org/view.resource.php?resourceID=000881). California now allows for state trademark registrations with caveats (noted below).

US Federal Registration

The USPTO does not grant federal trademark registrations for marks that violate federal law but does allow registration for ancillary lawful goods/services such as vaping pipes, clothing, and providing online information about cannabis.

USPTO Background: The federal government and, consequently the USPTO states: “if the record indicates that the mark itself or the goods or services violate federal law, an inquiry or refusal must be made.” TMEP §907 states in pertinent part that “evidence indicating that the identified goods or services involve the sale or transportation of a controlled substance or drug paraphernalia in violation of the Controlled Substances Act (“CSA”), 21 U.S.C. §§801-971, would be a basis for issuing an inquiry or refusal. CSA makes it unlawful to manufacture, distribute, or dispense a controlled substance; possess a Schedule I controlled substance; or sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia. … [R]egardless of state law, marijuana, marijuana extracts, and the psychoactive component THC remain Schedule I controlled substances under federal law and are subject to the CSA’s prohibitions. … These prohibitions apply with equal force to the distribution and dispensing of medical marijuana.”

This hard stance could be changing. Last September 2018, the DEA removed some CBD/THC products from Schedule I (see https://mjbizdaily.com/dea-moves-cbd-medicines-off-schedule-1-a-limited-expansion-of-cannabis-access/) (“drugs including CBD with THC content below 0.1% are now considered Schedule 5 drugs … The action came three months after the FDA approved its first nonsynthetic, cannabis-derived medicine, a CBD preparation for rare types of epilepsy. …”)).

And in December 2018, the President signed the Agriculture Improvement Act of 2018 (“Farm Bill”) that, among other things, removes hemp (containing less than 0.3% THC) from the purview of the CSA. It is unclear at this point whether trademark applications will be accepted for CBD preparations as the FDA is still maintaining control over cannabis products (“we treat products containing cannabis or cannabis-derived compounds as we do any other FDA-regulated products … This is true regardless of the source of the substance, including whether the substance is derived from a plant that is classified as hemp under the Agriculture Improvement Act.” See See https://www.fda.gov/NewsEvents/Newsroom/PressAnnouncements/ucm628988.htm).

Registrations for Ancillary Lawful Goods/Services: There are registrations on the Federal Register involving the sale of cannabis that bypass the requirements such as advertising for the product or providing ancillary products such as:

Reg. No. 5298522 CANNABIS FOR SALE for “advertising and directory services, namely, promoting the services of others by providing a web page featuring links to the websites of others; Providing a searchable online advertising website and informational guide featuring the goods and services of other vendors via the internet in the field of marijuana”;

Reg. No. 5489681Trademark image for “shirts; shirts and short-sleeved shirts; graphic T-shirts; hooded sweat shirts; long-sleeved shirts; short-sleeve shirts; sports shirts; T-shirts”;

Reg. No. 5212898 Trademark image for “software, namely, downloadable software in the nature of a mobile application for use in community engagement, social networking, education and sharing of information in the field of plant cultivation, specifically cannabis and cannabis cultivation; software, namely, downloadable software for personal computers for use in community engagement, social networking, education and sharing of information in the field of plant cultivation, specifically cannabis and cannabis cultivation”;

Reg. No. 5720567 Trademark image for “e-books featuring the topic of cannabis recorded on computer media” and “Printed books in the field of cannabis.”

Reg. No. 5459745 STATE FLOWER for “[b]usiness consulting services in the fields of holistic medicine and cannabis; providing a website featuring consumer information in the field of holistic medicine and medicinal cannabis.”

State Trademark Registrations

As of January 2018, the State of California is accepting trademark applications for cannabis goods and services with certain caveats (i) classification of goods and services are those adopted by the USPTO (as noted above, the USPTO does not accept applications for cannabis products but does accept applications for ancillary products); (ii) applicant is required to state whether it previously sought to register the mark with the USPTO and, if registration was refused, to disclose the reasons why it was refused at the federal level.”

Conclusion

The Cannabis industry is growing, particularly in those states where it is legal for medicinal and recreational purposes (e.g., $2.5 billion in 2018 in California alone) and as shown by an uptick in the luxury retail space (e.g., Barney’s recent opening of a high-end head-shop in Beverly Hills).

However, as long as Cannabis is not legal at the federal level, registration of trademarks on both the federal and state level will be problematic for the product itself but, as shown above, ancillary goods and services can be protected. For example, under the current circumstances, Barney’s could possibly obtain a registration for THE HIGH END covering retail store services including the offering of upscale smoking accessories, French rolling papers and jewelry. Registration would not be available for cannabis products. These circumstances could be changing with the recent decision by the DEA and the passing of the Farm Bill but it is unclear, at this point, how it will play out. To be continued!

Blog by: Mary B. Aversano
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PROUD POUR REGISTERS 3D OYSTER SHELL MEDALLION FOR WINE

Proud Pour applied for a mark on December 15, 2017 that consists of a 3D “product packaging, which is an oyster shell that is hung from the neck of a wine bottle. The oyster shell has a hole made in it and is hung from the neck of the bottle by twine, string, a rubber band, or other similar item. The hole made in the oyster shell, the item or method used to hang the shell, and the wine bottle are not part of the mark. The broken lines depicting the hole, the item used to hang the shell, and the wine bottle are intended to show the position of the mark and are not part of the mark.”

Oyster inset

The drawing and mark in context of the wine bottle as follows:

                                    Oyster mark

 

The USPTO added the following design codes to the application:

03.19.18 – Conch shells;Nautilus;Sand dollars;Scallops;Shells, including sand dollars, nautilus, conch shells and scallops 

Sample drawings for design code 03.19.18

19.09.03 – Bottles, jars or flasks with straight, vertical sides;Flasks with straight or vertical sides;Jars with straight or vertical sides [Not claimed as part of the mark]

A search of 03.19.18 in connection with wine reveals the following:

Mark Image          Mark Image  Mark Image

 

There is also a design code that covers Oysters: 03.19.12 – Clams; Mollusks; Oysters

Sample drawings for design code 03.19.12

A search of 03.19.12 in connection with wine reveals the following:

Mark Image             Mark Image              Mark Image

 

No office action issued and a registration (U.S. Reg. No. 5519295) issued on July 17, 2018.

Blog by: Mary B. Aversano
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PEROT MUSEUM OF NATURE AND SCIENCE REGISTERS 3D BUILDING CONFIGURATION

 

Building design

The Perot Museum originally applied for the mark described as “a three-dimensional configuration of a building” in connection with “[e]ducational services, namely, conducting programs in the fields of nature and science; Museum services; Party and wedding reception planning and coordination services; Special event planning, coordination and consultation services for social entertainment purposes.”

After the filing, the USPTO issued a design code –  07.03.25 Other buildings, including schools, hospitals and libraries. Examples are:

Sample drawings for design code 07.03.25

Also found with this design code and “educational services”;

Mark Image  Mark Image  Mark Image  Mark Image  Mark ImageMark Image  Mark ImageMark Image

The Examining Attorney issued an office action citing two issues required to be resolved: (i) a new drawing; and (ii) new mark description. In response, the Perot Museum provided the following:

Updated drawing – e.g., disclaiming the stairs and showing the stairs and under structure in dotted lines:

And a more detailed description:

The mark consists of a three-dimensional configuration of a building. The top portion of the building features a cube-like design with a partial triangle cut out of one corner. In front of the triangle is a rectangular bar design featuring squares and rectangles. Below the cube design features an abstract shape. The right side is rectangular, with one corner of the rectangle extending out onto a pointed tip. The left side is triangular, with the bottom section featuring a zig-zag-like design. The outer portion of the building is covered with quadrilaterals, squares, rectangles and triangles. The areas depicted in dotted lines are not a feature of the mark and are intended to show the placement of the mark.

Both updates were accepted and a registration (U.S. Reg. No. 5426520) issued on March 20, 2018 for the 3D Building Configuration.

Blog by: Mary B. Aversano
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Mary Aversano Leads INTA Table Topic on “Gesture Marks”

TSA62 – Gesture Trademarks: Non-Traditional Mark Protection in the United States

Saturday, May 20, from 1:15 pm – 3:15 pm

Moderator: Mary B. Aversano, Aversano IP Law, United States

Introduction – In the United States, a non-traditional trademark (NTM) is a mark other than the conventional word or 2D logo mark, and can be shown in many formats such as 3D, color, sound, motion and including gestures. A “gesture” as defined by the Merriam-Webster dictionary is “movement usually of the body or limbs that expresses or emphasizes an idea, sentiment, or attitude [e.g., he] raised his hand overhead in a gesture of triumph …”

To view the entire outline click 2017 INTA Table Topic Gesture Marks Outline.

A few observations:

  1. USPTO codes “gesture” marks with two different design codes, (i) 02.11.14 “[h]ands and fingers forming the following: handshake, finger pointing, fingers walking, OK sign, and thumbs up or thumbs down;

021114

 

and (ii) 2.11.07, “hands, fingers and arms.”

hfa

  1. USPTO Design Search Code Manual currently does not make a distinction between   2D or 3D designs.
  2. There are 18,000 + mark assigned a gesture design code
  3. Prosecution of gesture marks is consistent with prosecution of other marks. See App No. 86/553,544. The application was refused registration in view of prior             registrations for similar gesture marks.

hand WWE

 

Blog by: Mary B. Aversano
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