The Trademark Trial and Appeal Board (“TTAB”) recently issued a precedential decision to uphold the refusal to register marks because the goods identified in the applications were cannabis delivery devices that were held to violate the Controlled Substances Act (CSA). On a question of first impression, the TTAB held that an exemption to the CSA for products that are permitted under state law does not open the door to federal trademark protection.
Like other such decisions, the case shows the interplay between federal trademark law, other federal laws and regulations (CSA and Food, Drug and Cosmetic Act), and state laws that have legalized marijuana.
Applications for “essential oil dispenser” questioned
In 2016, National Concessions Group applied to register the mark BAKKED as well as a design mark
goods that were amended to an “essential oil dispenser, sold empty, for domestic use.”
The Examining Attorney issued a number of office actions that included an inquiry about the nature and use of the goods, which ultimately ended with a final refusal of the applications because the identified goods were considered to be drug paraphernalia in violation of the Controlled Substances Act. As such, the Examining Attorney concluded, the goods were not in lawful use in United States commerce. In support of this decision, they cited the applicant’s website and promotional materials as well as third-party sources to support the position that the goods were for “dabbing,” a method of delivering concentrated amounts of cannabis.
Federal drug law prohibits trademark registration
National Concessions Group appealed the refusals, which lead to the precedential decision issued by the TTAB in May 2023.
First, the Board affirmed the Examining Attorney’s position that the applicant’s products were drug paraphernalia as defined under the CSA. The applicant had argued that its product was sold empty and applicant itself did not intend that the products specifically be used with cannabis. However, the Examining Attorney’s submission of evidence from applicant’s own advertising of its products demonstrated that they actually were designed and intended for use with cannabis.
Applicant also relied on an exemption from the CSA for those authorized under state law to “manufacture, possess, or distribute” items that would otherwise be considered drug paraphernalia. However, the TTAB held that even if the applicant were covered by the exemption, it would not entitle the applicant to the federal trademark rights on the mark appearing on those products. In this case of first impression, the TTAB held that when that exemption to the CSA is based on state law, that exemption cannot be used to obtain a federal trademark registration.
Next steps
Companies that apply to register marks for cannabis-adjacent goods should be prepared for inquiries around the nature and use of the goods, as we saw in this case. In addition, the USPTO often looks to sources outside the application, such as in this case, where the Examining Attorney gathered evidence from the applicant’s own website as well as other, third-party sources. In short, an applicant for cannabis-related goods should be prepared to respond to this type of evidence and inquiry – as in all applications – to the USPTO.
This is not likely to be the last word on cannabis-related applications. We will be here to go into the weeds, pun intended.