photo-1441015219334-4ab3ab01e5b3When we last left the Trademark Trial and Appeal Board (“TTAB,” an administrative arm of the U.S. Patent and Trademark Office), they had issued a precedential opinion that registrations could not be issued for marks that covered the sale and use of marijuana products or paraphernalia primarily intended or designed for use in ingesting or inhaling marijuana, even if legal in the state where the mark was used.  In re Morgan Brown, Ser. No. 86/362,968 (TTAB July 14, 2016) (see “Smoke Signals from Specimen of Use Support Registration Refusal for ‘Herb’ Sales Described in Applications,” ILN Blog 9/19/2016).  In a more recent precedential decision, the TTAB has now held that, despite the fact that marijuana is legal in 28 states and the District of Columbia for medicinal use and in eight states and the District of Columbia for recreational use, the federal Controlled Substances Act (“CSA”) prevents a mark owner from making lawful use of its mark in commerce when the goods or services in question are marijuana or equipment for marijuana use.  Without the ability to use a mark in lawful commerce, a trademark applicant therefore cannot have the required bona fide intent to use the mark in commerce or prove actual use in commerce.  In re JJ206, LLC, dba JuJu Joints, Ser. Nos. 86/474,701 and 86/236,122 (TTAB, October 27, 2016).  This is true regardless of whether the U.S. Department of Justice would ever prosecute the trademark applicant for violating the CSA.

JJ206, LLC applied to register POWERED BY JUJU for “smokeless cannabis vaporizing apparatus, namely, oral vaporizers for smoking purposes; vaporizing cannabis delivery device, namely, oral vaporizers for smoking purposes,” based on intent to use the mark in commerce.  Applicant also applied to register JUJU JOINTS for the same goods, based on actual use in commerce.  The applications were assigned to different examiners, both of whom refused registration.  The examiner for POWERED BY JUJU refused registration based on the lack of a bona fide intent to use the mark in lawful commerce.  The examiner for JUJU JOINTS refused registration based on lack of lawful use of the mark in commerce.  As § 907 of the Trademark Manual of Examining Procedure states, “if the mark or the identified goods or services are unlawful, actual lawful use in commerce is not possible…a refusal…is also appropriate for…non-use-based applications, because the applicant does not have a bona fide intent to lawfully use the mark in commerce.”

On appeal of both refusals to register, the TTAB concluded that “[i]t logically follows that if the goods on which a mark is intended to be used are unlawful, there can be no bona fide intent to the use the mark in lawful commerce.”  The TTAB analogized the situation to one in which an applicant is permanently enjoined by a court from using the mark because it violated a third party’s right of publicity.  The TTAB observed that where is it legally impossible for applicant to have a bona fide intent to use its mark in commerce, or where the identified goods in a use-based application are illegal under the CSA, the mark cannot be registered. As applicant’s goods are designed and intended for introduction of marijuana or cannabis into the human body, they are illegal drug paraphernalia under the CSA.  They are not in the same league as other (legal) oral vaporizing equipment like e-cigarettes, as is clear in applicant’s descriptions of its goods in the applications.

The TTAB rejected the applicant’s argument that he should be treated the same as the applicant in a pending application and the owners of four registrations, whose goods and services are marijuana related.  The relied-on application had not registered [in fact, it has been abandoned] and the goods and services in the registrations could fit into exceptions to the CSA or otherwise be registrable.  The TTAB also made short work of the applicant’s contention that his products were lawful in the states where they are marketed, relying on its prior decision in Brown.

Applicant then raised the novel argument that its goods were lawful in states that comply with federal directives such as the “Cole Memo,” a 2013 U.S. Department of Justice memorandum written by Deputy Attorney General James Cole to U.S. Attorneys (the federal prosecutors).  It sets out federal “enforcement priorities” guiding “the Department’s enforcement of the CSA against marijuana-related conduct.”  It focuses federal prosecutors’ efforts on a list of certain enforcement priorities, including (1) preventing distribution of marijuana to minors, (2) preventing violence and firearm use in marijuana-related activities, and (3) preventing marijuana from being diverted from states where it is legal to states where it is not.

As the Cole Memo cannot override the prohibitions of the CSA, is intended only to be “a guide to the exercise of investigative and prosecutorial discretion,” and explicitly does not provide “a defense to a violation of…the CSA,” the TTAB concluded that the Cole Memo cannot support registration of a mark used on goods made illegal by federal law, refusing registration of applicant’s marks.

JJ206, LLC, the applicant in this decision, also lost its appeal to register JUJU ROYAL for marijuana paraphernalia, in a non-precedential decision based on the same reasoning as this decision.  See In re JJ206, LLC, Ser. No. 86/532,274 (TTAB November 7, 2016).  It has one more appeal pending in the TTAB, concerning the mark JUJU RX, Ser. No. 86/475,885), which is not likely to succeed.  It remains to be seen whether the applicant files an appeal to the U.S. District Court or U.S. Court of Appeals.

The U.S. election of November 8, 2016, in addition to electing the next President, saw the voters of California, Maine, Massachusetts, and Nevada legalize the use, sale, and recreational consumption of marijuana.  Those states joined Alaska, Colorado, Oregon, Washington, and the District of Columbia in permitting such recreational use.  Another four states (Arkansas, Florida, Montana, and North Dakota) voted to legalize marijuana for medical purposes.  Only Arizona voters defeated the proposal in this election.  In addition to the 28 states and District of Columbia where marijuana is legal for medical and, in some states, recreational use, 16 other states permit limited medical use of marijuana low in the active ingredient THC.  Yet the U.S. Patent and Trademark Office remains adamant that marks covering most marijuana-related goods and services are ineligible for registration and state trademark offices are taking similar positions.  Thus, popular strains of marijuana sold in state-legal dispensaries, such as Blue Dream, Hell’s Angel OG, Green Crack, Northern Lights, Girl Scout Cookies (which can be expected to meet obstacles stronger than the CSA), Blueberry Diesel, and Bruce Banner (alter ego of comic book character The Incredible Hulk) are not likely to become registered trademarks in the near future.

This is in sharp contrast to Canadian marijuana and trademark law.  The Canadian Intellectual Property Office has already registered some marks for medical marijuana or marijuana-related paraphernalia such as POCKIT ROKITZ and REALEAF, and is far along into the registration process for marks such as HACK FREE, ROCK GARDEN MEDICINALS, TWEED, STICKYBUDS, and LIBERTY FARMS.

President-elect Donald Trump is himself the owner of a large number of trademark registrations through his business and organizational interests.  It remains to be seen what the attitude of the Trump Administration will be toward federal legalization of marijuana or the registration of marijuana-related trademarks, where the popular voter issues of “law and order” and “states’ rights” arguably conflict.