Fair Use

Brooke Penrose and Deb Peckham

Brooke Penrose and Deb Peckham

In a recent decision, the Trademark Trial and Appeal Board (TTAB or Board) considered whether an application based upon an “intent to use” a mark in commerce may be predicated on proposed use with currently unlawful goods that may become lawful in the future.

In In re Joy Tea Inc., the applicant proposed to use its mark with, among other items, “tea-based beverages also containing CBD.” The Examiner refused to register the mark on the grounds that applicant’s claim of proposed use of a mark “in lawful commerce” was invalid due to not complying with the Food, Drug and Cosmetic Act at the time the application was filed.

On appeal to the Board, the narrow question became: “[D]oes a trademark applicant’s belief that the cannabis goods specified in its trademark application will become federally lawful in the future provide a sufficient basis upon which to predicate its claimed ‘intent to use’ the mark in lawful U.S. commerce?”

The TTAB’s answer was “no.”

The TTAB upheld the Examiner’s refusal to register the applicant’s mark based on the longstanding prohibition against attempting to reserve a right in a mark, rather than having the ability to use the mark in commerce.… Keep reading

You Can Trademark That?  They Can Own What? Who Knew?

There are many reasons we have IP laws – but primary among them is to encourage creative types like artists and inventors to profit from their efforts by way of royalties or exclusive rights.  To encourage those efforts, the intellectual property laws give authors and creators a relative monopoly over something they’ve created – a trademark, an invention, a script, a computer program, etc.  It’s like society is saying “you made it, so you can own it – at least for a while…”

But a natural tension immediately presents itself when we grant these exclusive rights.  Our culture wants to embrace, use and assimilate all that is cutting edge and new without having to ask for permission.  We take – no, we borrow Pharrell Williams’  “Happy” riffs and make them background music to our YouTube® videos of our cats and our dogs.  We expropriate “just a” screen capture from the Godzilla movie and create e-cards or embed them on our Facebook® pages.  Our post-90s, crowd sourced, media-centered sensibility has created this “if it’s out there it must be free” (or “it wants to be free”) ethos … Keep reading