We have composed (and talked) extensively about the dos and don’ts of filing cannabis-linked point out and federal trademarks, and we all know by now that you simply cannot attain a federal trademark registration for items or solutions that are not lawful pursuant to federal legislation. But I have heard a large amount of inventive arguments in this house, and have had several purchasers indicate an fascination in hard the standing quo at the United States Patent and Trademark Workplace (USPTO).
However (or fortuitously, based on how you seem at it), the Trademark Trial and Appeals Board (TTAB) has handed down numerous viewpoints of precedent that lay forth the USPTO’s situation on the “lawful use in commerce” necessity in depth. In this submit, I believed it would be beneficial to breakdown the TTAB’s examination on this issue by means of their In re PharmaCann LLC belief, which was issued in June of 2017.
In the PharmaCann scenario, the Applicant sought registration of two trademarks: PHARMACANN and PHARMACANNIS, both for “retail keep solutions showcasing professional medical marijuana,” in Intercontinental Class 35, and “dispensing of prescription drugs showcasing professional medical marijuana,” in Intercontinental Class 44. The Analyzing Lawyer refused registration of both marks pursuant to Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127, on the floor that Applicant could not allege a bona fide intent to make lawful use of the marks in commerce since the solutions discovered associated the distribution and dispensing of cannabis, which is a controlled substance whose distribution and dispensing are illegal below the federal Controlled Substances Act (CSA), 21 U.S.C. §§ 801 et seq..
In its belief, the TTAB pointed out that it has “consistently held that, to qualify for a federal … registration, the use of a mark in commerce will have to be ‘lawful’.” In re JJ206, LLC, 120 USPQ2d 1568, 1569 (TTAB 2016) (affirming refusal to sign-up Run BY JUJU and JUJU JOINTS for cannabis vaporizing and shipping and delivery solutions for absence of lawful use in commerce). The TTAB even more elaborated that for a mark to be suitable for federal registration, “any items or solutions for which the mark is used will have to not be illegal below federal legislation.” In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016). And even if an Applicant data files on an intent-to-use foundation (meaning they intend to use the mark in commerce in the around future but have not accomplished so however), if the discovered items or solutions with which the mark is meant to be used are illegal below federal legislation, “the applicant simply cannot use its mark in lawful commerce, ad it is a authorized impossibility for the applicant to have the requisite bona fide intent to use the mark.” JJ206, 120 USPQ2d at 1569.
In general, registration will not be refused for absence of lawful use in commerce except if both “(1) a violation of federal legislation is indicated by the application or other proof …, or (2) when the applicant’s application-linked things to do require a for each se violation of a federal legislation.” Brown, 119 USPQ2d at 1351. In the scenario at hand, the TTAB deemed the Applicant’s marijuana distribution and dispensing things to do to be a for each se violation of the CSA. The examination listed here was quite easy, where by the CSA prohibits, between other issues, production, distributing, or dispensing controlled substances (21 U.S.C. § 841(a)(1)), and where by marijuana is a Timetable I controlled substance below the CSA. 21 U.S.C. § 812(c) Timetable I (c)(10).
The Applicant listed here built two arguments in opposition to the TTAB’s situation. The 1st argument was that “[s]ince 2009 the Division of Justice has continuously refused to handle professional medical marijuana as an illegal drug by continuously refusing to implement the Controlled Substances Act versus it.” In making its argument relating to the federal government’s absence of enforcement versus professional medical marijuana companies operating in compliance with point out legislation, the Applicant relied on the (now rescinded) Cole Memorandum. But the TTAB clarified that it had beforehand resolved in JJ206 that the Cole Memorandum “provides no assist for the registration of a trademark used on items whose sale is illegal below federal legislation,” and that this determination applied with equivalent drive to the Applicant in this case’s meant use of its marks for distributing and dispensing professional medical marijuana.
The Applicant’s next, and additional novel, argument was that “Congress has taken the exact situation as the Division of Justice,” since in the Consolidated and Even further Continuing Appropriations Act of 2015 (as renewed in the Consolidated Appropriations Act of 2016, subsequent continuing resolutions, and in the Consolidated Appropriations Act of 2017), Congress has prohibited the Division of Justice from making use of cash to prevent states that have legalized professional medical marijuana from utilizing their personal point out rules authorizing the use, distribution, possession, or cultivation of professional medical marijuana. The Applicant’s argument was that Congress’ determination not to fund the DOJ to implement the CSA versus professional medical marijuana, “it would make no sense and provide no function for the Board to choose a diverse position…”.
The TTAB, even so, discovered this next argument equally lacking, and relied on United States v. McIntosh (833 F.3d 1163, 1169-70 (9th Cir. 2016)) for its examination. In that scenario, the court concluded that the Appropriations Acts and the Rohrabacher-Farr Modification did not make professional medical marijuana authorized below the CSA. The TTAB applied that summary to the scenario at hand and turned down the Applicant’s argument.
These TTAB viewpoints are instructive in that they give us a apparent check out into how the USPTO is lawful use in commerce necessity whilst the authorized standing of cannabis and specifically the federal government’s enforcement efforts remain murky, so extended as marijuana stays a Timetable I controlled substance, federal trademark security will not be out there.
For other posts on cannabis trademarks, examine out the next: