Trademark issues on the edge
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Trademark issues on the edge

Stereotypes about academics living in ivory towers were shattered yesterday as law professors considered the practical challenges of branding cannabis products and trademarking sex toys.

At the Sex, Drugs, Motorcycle Clubs: Trademark Issues on the Edge Professor Luncheon, academics talked about the problems of helping clients in the adult content industry and the legal marijuana trade to protect their IP rights.

Shabnam Malek of Cobalt explained the regulatory barriers that affect her clients’ abilities to trademark the names of their marijuana products in those states in the United States that now allow the sale of cannabis-related goods. “You can imagine how terrible this is from a branding perspective,” she said.

Todd Alberstone of Alberstone Consulting outlined the problems suffered by what he described as legitimate/established adult content brands in an online marketplace crowded with get-rich-quick businesses. “In the past brands such as PLAYBOY, PENTHOUSE and HUSTLER had very clear identities and associations. Now the adult content market is very different.”

He went on to discuss the problems that adult content companies have when they extend their brands into the retail market, such as selling sex toys. “There is an inherent conflict between the brand names used to drive search engine traffic and those that are acceptable to the USPTO. Terms that are descriptive or suggestive will cause problems,” he said.

The panel was hosted by David Bell of Haynes & Boone. The vice-chair of the Academic Committee, Megan Carpenter of Texas A&M School of Law, said that the session was designed to examine the issues that push the boundaries of trademark law.

The Academic Committee has 65 members. Among other things its members organize the Academic Course on International Trademark Law and a Career Development Day for law students at the Annual Meeting, as well as hosting the Professor Luncheon for IP deans and law professors. This year they also launched the (Dis)Order in the Court debate featuring practitioners and professors debating topical law issues.

more from across site and ros bottom lb

More from across our site

Counsel reveal how a proposal to create separate briefings for discretionary denials at the USPTO could affect their PTAB strategies
The UK Supreme Court rejected the firm’s appeal against an earlier ruling because it did not raise an arguable point of law
Loes van den Winkel, attorney at Arnold & Siedsma, explains why clients' enthusiasm is contagious and why her job does not mean managing fashion models
Allen & Gledhill partner Jia Yi Toh shares her experience of representing the winning team in the first-ever case filed under Singapore’s new fast-track IP dispute resolution system
In-house lawyers reveal how they balance cost, quality, and other criteria to get the most from their relationships with external counsel
Dario Pietrantonio of Robic discusses growth opportunities for the firm and shares insights from his journey to managing director
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Law firms that pay close attention to their client relationships are more likely to win repeat work, according to a survey of nearly 29,000 in-house counsel
The EMEA research period is open until May 31
Practitioners analyse a survey on how law firms prove value to their clients and reflect on why the concept can be hard to pin down
Gift this article