This article was originally published to Seyfarth’s The Blunt Truth blog.

Republic Technologies (NA) LLC (“Republic”) filed an application to register the proposed mark 4:20 with the United States Patent and Trademark Office (“USPTO”).  Republic amended its goods twice during prosecution of the application and ultimately sought to register “tobacco; cigarette papers; cigarette filters; cigarette tubes; cigarette rolling machines; handheld machines for injecting tobacco into cigarette tubes; machines allowing smokers to make cigarettes by themselves; none of the foregoing containing or for use with cannabis” (emphasis added). The USPTO alleged that consumers would understand 4:20 to mean cannabis, the mark misdescribes non-cannabis related goods, and consumers would believe the misrepresentation. Therefore, the USPTO refused registration alleging that the mark was deceptively misdescriptive of the goods in the application. Republic appealed the decision to the Trademark Trial and Appeal Board (the “Board”). But the Board saw through the smoke of Republic’s arguments and affirmed the refusal. 

Republic is a leading provider of smoking accessories. Republic initially filed its application for the mark 4:20 for use in association with the goods “tobacco; cigarette papers; cigarette filters; cigarette tubes; cigarette rolling machines; handheld machines for injecting tobacco into cigarette tubes; machines allowing smokers to make cigarettes by themselves.” Perhaps familiar with the many uses of Republic’s goods, the USPTO refused the application on mere descriptiveness grounds. It alleged that consumers understand 4:20 to mean cannabis and the goods describe a product containing or to be used with cannabis. The USPTO also asked Republic to provide additional information about its goods. In particular, whether the goods contain or would be used in connection with cannabis or marijuana. Continue Reading 4:20 Unfriendly – TTAB Says 4:20 is Deceptively Misdescriptive of Goods Not Used with Cannabis

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Join Seyfarth partners Ken Wilton and Lauren Leipold for an examination of pivotal 2023 developments in trademark litigation, from U.S. Supreme Court decisions to new guidance from federal appellate courts, district courts, and the USPTO. This webinar will provide actionable takeaways for your legal practice in 2024, from doctrinal shifts in the application of trademark law to technicalities in TTAB procedure. Learn how these developments will impact the ongoing protection, maintenance, and enforcement of trademarks in the United States and beyond.

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Kenneth Wilton, Partner, Seyfarth Shaw LLP

Lauren Leipold, Partner, Seyfarth Shaw LLPContinue Reading Upcoming Webinar! How to Win Your Next Trademark Battle: Lessons Learned in 2023

Decking the halls with festive flair is a beloved tradition, from cozy and simple to dazzling displays that could rival Clark Griswold’s winter wonderland. In this yuletide landscape, lights play a starring role, sparking whole industries focused on holiday home illumination. A centerpiece of this seasonal spectacle is often the twinkling Christmas tree.

Traditional tree lighting mainly focuses on the tree’s exterior, with their daytime wiring detracting from the tree’s aesthetic, requiring the wiring to be tucked away under tinsel and ornaments. Enter U.S. Patent No. 7,784,961, with its “clip-attachable light strings for Christmas tree branches,” a merry makeover for tree lighting. This jolly invention lights up each branch individually, featuring a central bus wire nestled near the trunk, branching into 5 to 10 light circuits, each sporting 10 to 20 bulbs. Clipped at each branch’s end, these strands can be extended to fit any tree, from a small spruce to a grand fir, creating a more enchanted, branch-by-branch illumination compared to the old ring-around-the-rosy style.Continue Reading Legal Lessons from Holiday Lights: Clarity in Patent Drafting

In the latest skirmish between Sarah Silverman and other authors against Chat GPT-maker OpenAI, OpenAI submitted a new decision from a California federal court in support of its attempt to dismiss the Silverman plaintiffs’ claims. According to OpenAI, that other court rejected theories and claims that are nearly identical to Silverman’s claims against OpenAI. If the court hearing Silverman’s claims agrees, copyright holders looking to sue AI companies in the future may find themselves facing long odds on certain claims.

The new California decision cited by OpenAI comes in the wake of a similar decision in a case involving an AI image generator. Like the court in that image-generator case, the new decision cited by OpenAI dismissed most of the plaintiffs’ copyright claims and other claims, although it did so with leave to amend all but one state-law negligence claim. The court in this new decision rejected as “nonsensical” the plaintiffs’ argument that large language models (or LLMs) “are themselves infringing derivative works,” holding that “[t]here is no way to understand the [LLMs] themselves as a recasting or adaptation of any of the plaintiffs’ books.” Similarly, the court rejected the notion that “every output of the [LLMs] is an infringing derivative work,” stating that “the complaint offers no allegation of the contents of any output, let alone of one that could be understood as recasting, transforming, or adapting the plaintiffs’ books. Without any plausible allegation of an infringing output, there can be no vicarious infringement.”Continue Reading “The Plaintiffs Are Wrong”: OpenAI Submits New Authority in Attempt to Knock Out Sarah Silverman’s Claims

In a relatively scathing opinion finding the plaintiffs’ Complaint “defective in numerous respects,” a district court judge has thrown out most of the claims a group of artists has asserted against AI platforms that allegedly used the artists’ copyrighted works without permission. The order in Andersen et al. v. Stability AI Ltd. provides an important preview on courts’ tolerance for AI-related copyright lawsuits moving forward—including a similar class action filed by actor/comedian Sarah Silverman and other authors.

As we previously wrote, the Andersen case relates to “Stable Diffusion,” an AI platform that generates images in response to user prompts. According to Plaintiffs, Stable Diffusion scraped the internet to copy and store billions of copyrighted images without consent or licenses to train the programs.  (For another good summary of the case and the claims, check out this post from The Fashion Law).  Continue Reading Some Stability For AI Defendants: Judge Dismisses All But One Claim in Andersen et. al., v. Stability AI LTD., et. al.

As our colleagues reported in this Seyfarth Shaw Legal Update, President Biden signed a comprehensive Executive Order addressing AI regulation across a wide range of industries and issues. Intellectual property is a key focus. The Order calls on the U.S. Copyright Office and U.S. Patent and Trademark Office to provide guidance on IP risks and related regulation to address emerging issues related to AI.Continue Reading White House Directs Copyright Office and USPTO to Provide Guidance on AI-Related Issues

When jack-o’-lanterns begin to glow and youngsters chart out their candy-collecting routes, an often-overlooked trend takes over every October: the Halloween commercial extravaganza! Beneath the shadows of ghouls and goblins, a profitable domain emerges for candy makers and costume creators. Yet, it’s not just about commerce; the essence of innovation is very much alive in