Ninth Circuit Finds “The Herbal Chef” Is Generic and Denies Trademark Protection

On Tuesday, the Ninth Circuit Court of Appeals settled an appeal by The Herbal Chef, LLC (“THC”) and held the words “The Herbal Chef” do not qualify for trademark protection. The short memorandum opinion affirmed summary judgment granted by Central District Court Judge, Andre Birotte Jr., in favor of defendant AFG Distribution, Inc. (“AFG”) in March 2020.

Some background: THC is a California company that has been providing private dining and catering services incorporating cannabis and other herbs since 2014. THC has also been promoting cannabis education awareness within the food and beverage industry. AFG is a North Carolina corporation that sells cooking products, some under the branding of “Herbal Chef.” It goes without saying that THC and AFG are two very different types of companies.

Interestingly, AFG was issued a trademark for “Herbal Chef” by the USPTO in September 2016 for specific classes of products like baking dishes, pot holders, trivets (Class 21), and electric food processors (Class 7). One year later, THC filed its own trademark application for the mark “THE HERBAL CHEF” for meal preparation, catering services, and private dining (Class 43), alleging it had begun using THE HERBAL CHEF mark in commerce in August 2015. The USPTO denied Plaintiff’s application. In its denial, the USPTO wrote, “Registration is refused because the applied-for-mark merely describes a feature, characteristic, function, quality, ingredient, purpose or use of applicant’s services.”

THC filed a lawsuit against AFG, claiming that its line of Herbal Chef products infringed its the HERBAL CHEF trademark. AGF pretty quickly filed a motion for summary judgment and asked Judge Birotte to dismiss THC’s case, arguing the THE HERBAL CHEF mark is “generic” and, thus, not entitled to trademark protection. THC filed an opposition arguing the mark is “persuasive/suggestive,” and accordingly automatically entitled to trademark protection. Because THC doesn’t have a registered trademark, its burden to prove this is higher.

Here’s the rundown: trademarks are classified in one of five categories of increasing “distinctiveness”: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful. For purposes of this case, what the first three categories break down as follows:

• “Generic” marks lack any distinctive quality, and therefore are not entitled to trademark protection.
• “Descriptive” marks, which describe the qualities or characteristics of a product, may be registered “only if the holder of the mark shows that the mark has acquired distinctiveness through secondary meaning.” An example of a “secondary meaning” is Apple – people obviously recognize that this refers to something other than an apple, and it’s specific to a brand of computers.
• “Suggestive” marks identify a product’s source and are entitled to automatic protection.

Judge Birotte found that THC failed to show the THE HERBAL CHEF mark was not descriptive and that a secondary meaning had not been established (or at least proven to be established). He also deferred to the USPTO’s findings in denying THC’s trademark application:

“As permitted by the Ninth Circuit and in the absence of any countervailing evidence set forth by Plaintiff, this Court finds the USPTO’s classification decision persuasive and likewise concludes that the mark THE HERBAL CHEF ‘merely describes a feature, characteristic, function, quality, ingredient, purpose or use of applicant’s services.’ Namely, the mark THE HERBAL CHEF denotes that Plaintiff primarily provides customers with a chef “who specializes in cooking with infused marijuana.”

The Ninth Circuit agreed, adding that THC’s alleged mark does not become suggestive just because it also offers goods and services in addition to cooking with cannabis. At the end of the day, the Appellate Judges found the dictionary definitions of “herbal” (which include a slang term for marijuana) and “chef” directly describe THC’s services (cooking with marijuana).

The lesson for our readers is this: use these decisions to inform your business and marketing strategies, and specifically on the scope of goods or services that can be protected under a trademark. Here’s a great post on that, which also includes relevant links to other posts and cases we’ve covered in the past.

The post Ninth Circuit Finds “The Herbal Chef” Is Generic and Denies Trademark Protection appeared first on Harris Bricken.

from Canna Law Blog – Harris Bricken https://ift.tt/3lEDThV
via IFTTT

2021 Mexico Cannabis Summit

Register HERE!

Mexico will soon be the largest country in the world with legalized cannabis and now is the time to start preparing for that.

Harris Bricken and Harris Bricken Mexico will be teaming up with Mexico-based law firm, Lawgic, for this upcoming four-day virtual event, taking place Thursday, March 25 through Sunday, March 28th. This event will be bringing together Mexico cannabis experts and key players to discuss and teach about Mexico’s burgeoning cannabis industry. These experts include Chris Nazarenus, CEO and Co-Founder of Medical Marijuana 411, Nick Jikomes, Director of Science & Innovation at Leafly, Dr. Karyemaitre Aliffe, biomedical executive, and many more!

The summit will focus on the following four topics:

• Medical Advances and Research
• Pharmaceutical Business
• Agribusiness
• Commercial & VC opportunities

Harris Bricken attorneys, Hilary Bricken, Fred Rocafort, Jonathan Bench, and Adrián Cisneros Aguilar, will be talking about how businesses and investors can enter Mexico’s soon-to-be booming cannabis market. The Harris Bricken panelists will, among other things, cover the following:

1. What you CURRENTLY can and cannot do in Mexico with cannabis, hemp and CBD.
2. Mexico legalization perspectives and the pluses and minuses of the Mexican cannabis/hemp/CBD markets.
3. How Mexican legalization benefits American cannabis companies.
4. How American companies can expand into Mexico.

Panelists will answer attendee questions throughout the webinar, but please feel free to submit any questions prior to the webinar that you would like the panelists to address, either as comments below or when you register.

Register HERE!

The post 2021 Mexico Cannabis Summit appeared first on Harris Bricken.

from Canna Law Blog – Harris Bricken https://ift.tt/2OM6Mgs
via IFTTT

Cannabis in Mexico Part 2: The Q&A: The Webinar Video Replay

For anyone who was not able to join our March 4th webinar on Cannabis in Mexico Part 2: The Q&A, we’ve got you covered! Below, please find the full presentation for your viewing pleasure.

You can watch part 1 of this two-part series HERE.

Stay up to date on cannabis in Mexico via the Canna Law Blog.

The post Cannabis in Mexico Part 2: The Q&A: The Webinar Video Replay appeared first on Harris Bricken.

from Canna Law Blog – Harris Bricken https://ift.tt/3vJo12r
via IFTTT

Colorado Senate Passes School Medical Cannabis Bill

A bill that would give children access to their medical cannabis in school is getting closer to becoming a law.

from News – High Times https://ift.tt/2PcLurP
via IFTTT

White House Staffers Fired or Pushed to Resign over Past Cannabis Use

The news comes a month after an initial statement that indicated past cannabis use would not disqualify candidates from jobs at the White House.

from News – High Times https://ift.tt/3cKWUvc
via IFTTT

California’s Overly Restrictive Cannabis Laws Incentivize Illegal Activity

It’s no secret that California has a massive cannabis illicit market, despite the fact that it is perfectly legal (under state law) to sell cannabis if a business goes through the licensing process and complies with state and local laws. However, since the passage of the Medicinal and Adult-Use Cannabis Regulation Act (MAUCRSA), and the opening of licensing in 2018, the state’s illicit-market problems seem to have only gotten worse, not better. There were reportedly 3,000 illicit cannabis businesses in late 2019; that number is probably much higher today.

It seems counterintuitive that a state that allows licensed medicinal and recreational cannabis activity would have such a robust illicit market. However, the reasons that the illicit market is alive and well are baked into state and local laws themselves. For starters, the fact that MAUCRSA allows cities to ban commercial cannabis activities altogether has led to many cities doing just that. This is a lose-lose for everyone involved: illicit businesses continue in those cities (why wouldn’t they when prohibition never worked in the first place), cities lose out on tax and licensing revenue, and customers lose out on access to tested and safe cannabis.

It doesn’t just end with local prohibition. The California Bureau of Cannabis Control (BCC) essentially gave up in a fight over whether retailers licensed in one jurisdiction could deliver into those jurisdictions that prevent cannabis activities. Had that litigation turned out differently, it’s possible that delivery companies would have been able to deliver statewide, and effectively eliminated the “deserts” where people cannot legally purchase cannabis. In turn, this likely would have forced more cities’ hands with respect to allowing physical cannabis establishments, as they would have realized they were missing out on tax revenues. But things will stand for the foreseeable future and only a few cities here and there will change course each year.

Even in those cities in which licensing is fully legal, there are so many challenges on getting and maintaining licenses that many would-be licensees decide it’s not worth it and take the risk of running an unlicensed business. Above-market rent, costly buildouts that are effectively mandated by intense regulations, high application and license fees (at the state and local level), and high taxes mean serious dollar signs for people that may not have the money and may not be able to or want to try to raise capital and cede control of their enterprise.

Another regulation that does no favors for the licensed industry is the prohibition on selling cannabis between 10 PM and 6 AM, which is often narrowed even further at the local level. It makes little sense that people can go to bars or purchase alcohol, but can’t go to a store or even have cannabis delivered. If someone wants cannabis “after hours”, they will probably end up getting it, just not from a licensed company.

What is the fix? It’s clear that the fix is not enforcement. Enforcement to date has been lackluster at best (and that’s a generous description), but even if the state became super aggressive with enforcement, would that really change anything? When the state and federal government were actively prosecuting cannabis activity prior to legalization, people still bought and sold cannabis. Enforcement in a regulated market is likely to have even less of an effect than it did previously and will be much harder for the state to carry out since in some cases, the line between legal and illegal is blurred whereas before, all cannabis activity was illegal.

The answer almost certainly lies in relaxing restrictions. In order to make a real change, the state legislature or voters (by initiative) need to either restrict local control or at least ensure that deliveries can be conducted statewide. Taxes need to be reduced. Licensing costs need to be reduced. Regulations that make little sense need to be amended or scrapped. These are all common-sense ways that the state can fight the illicit market without wasting too much time on enforcement. The ball is in the state’s court. Stay tuned to the Canna Law Blog for more California cannabis developments.

The post California’s Overly Restrictive Cannabis Laws Incentivize Illegal Activity appeared first on Harris Bricken.

from Canna Law Blog – Harris Bricken https://ift.tt/3cIJf7W
via IFTTT

Pennsylvania Police Make More Than 20,000 Pot Arrests During The Pandemic

There is a jarring racial disparity in the arrests.

from News – High Times https://ift.tt/38RnKAE
via IFTTT