For our weekly SoCal IP Institute meeting on Monday, Nov. 14, 2016, we will discuss the following:

In re JJ206, LLC dab JuJu Joints (T.T.A.B. October 27, 2016) (available here).  JuJu sought to register the marks Powered by JuJu and JuJu Joints for goods in class 34 explicitly indicating that the mark would be used in connection with vaporizers for cannabis and marijuana products. The Examining Attorney refused registration under the CSA because the applicant lacked a bona fide intent to use the marks in lawful commerce under Sections 1 and 45 of the Lanham Act. The CSA forbids both the registration of marks covering illegal drugs and “drug paraphernalia” as defined by the CSA.

Here, the refusal to register was affirmed because the “equipment [is] primarily intended or designed for use in ingesting, inhaling, or otherwise introducing cannabis or marijuana into the human body [which] constitutes unlawful drug paraphernalia under the CSA.” The applicant argued (1) there are other, similar registrations and (2) the Cole Memo put forth by the DoJ minimizes the enforcement of marijuana-related activities. Both arguments were to no avail. The Examining Attorney was affirmed.

SAS Institute, Inc. v. Complementsoft, LLC (Fed. Cir. November 3, 2016) (available here). Here, SAS sought panel rehearing and en banc rehearing of a decision to by the PTAB to partially institute an IPR petition that sought review of all claims. The panel affirmed without opinion, thereby blessing the PTAB’s ability to partially institute requested IPRs. However, Judge Newman issued a dissent arguing that partial initiation is beyond the scope of the law.  After a long explanation, the point was finally made near the end, she pointed to:

§ 318(a) Final Written Decision –– If an inter partes review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d).

So, she did not agree on the basis primarily of 35 U.S.C. Section 318 above because no final written decision was issued regarding those claims.

All are invited to join us on Monday, Nov. 14, 2016, at noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Elisha Manzur by 9 am Monday morning.