Trademark Scams Aplenty

Trademark Scams Aplenty

by Susan Basko, esq.

Trademark scams are harming the work of the U.S. Trademark Office, as well as harming legitimate Trademark lawyers, and duping and defrauding trademark applicants. If you want to apply for a trademark, how can you spot a scam?  This is fairly easy -- if you are using an automated service, instead of a trademark lawyer, you have probably been taken in by a scam.  If you are not conferring directly with a real live licensed lawyer, it is probably a scam.  If it appears to cost too little, it is probably a scam.  If it arrives in the mail demanding money, it is definitely a scam.  Below, we will look at a few of the biggest trademark scam/ fraud situations going right now.  

First, I recently received this Alert from the U.S. Trademark Office.  


Trademark Alert.  U.S. lawyers: Beware of solicitations asking to use your bar credentials

The USPTO recently learned that U.S. attorneys are again receiving emails from unlicensed individuals offering to pay to use the attorney's bar credentials in trademark filings  These solicitations are a direct attempt to circumvent the U.S. counsel rule.

Although we believe that only a small percentage of practitioners are engaging in this practice, the USPTO would like to remind U.S. attorneys that such an arrangement would likely be aiding the unauthorized practice of law and also a violation of federal rules, including the USPTO's Rule of Professional Conduct, 37 C.F.R. Part 11.

Scams can adversely impact the integrity of the trademark register.  If you receive a solicitation asking to use your bar credentials, please forward it to TMScams@uspto.gov.

Explained: The US Trademark Office requires any foreign entity to hire a U.S. lawyer to conduct any work with the U.S. Trademark Office, including trademark applications and the certification process.  In addition, the U.S. Trademark Office only allows licensed U.S. lawyers to represent any other person or entity before the Trademark Office.  There are non-lawyers who engage in trademark registration scams -- and thus, they try to "borrow" credentials from lawyers.  However, as you can note in the warning above, any lawyer agreeing to this is likely to lose their law license and possibly face criminal charges.  

ANOTHER HUGE TRADEMARK SCAM involves automated websites that claim to be registering trademarks for people, often at unrealistically low prices.  This whole practice started several years ago, and this is how it works:  Only a U.S.-licensed lawyer can register a trademark for any other person or company,  So, these automated websites claim that it is the applicants themselves who are registering their own trademark.  But, this makes no sense.  Trademark registration is a process that takes at least a year, and involves interaction with the trademark examiner.  These trademark website scams also usually charge unrealistically low prices.  The registration fee itself is $250 - $350 per class of goods or services.  On top of that, there is the work of a trademark lawyer for at least a year.  So, when you do a google search and up top are listings for companies charging $49, $59 or $69 for trademark registration, you know it is a scam.  It could not possibly cost that low when the required application fee itself is several hundred dollars.

I saw one trademark scam ad touting a "Turnaround Time of 72 Hours." This is not even slightly possible.  After filing an application, it waits for about 4 months to be assigned to a Trademark Examiner. In 72 hours, the application may (or may not) show up on the USPTO Database as "LIVE."  "Live" is used to denote trademarks that are in the application process that have not yet been declared DEAD, as well as those that have been successfully registered.  Perhaps the Trademark Office should make a different designation for trademark applications that are still in the application process -- for example, "Application Pending."  Referring to fraudulent trademark applications as "LIVE" facilitates that fraud.  The scam companies can send their customers a fake trademark certificate and point to their trademark on the USPTO database with the word "LIVE" next to it.  If the scam company takes no further action on a doomed application, as things are now run at the USPTO, that "LIVE" designation will remain for a year.  That feeds the fraud and enables it.  

Tim Lince of World Trademark Review did an absolutely brilliant investigative journalism piece on these trademark scam companies.   Muhammad Burhan Mirza of Digitonics Lab was arrested for running many of these trademark websites.  He and nine others were charged with fraud and money-laundering for running sites that claimed to be doing trademark registration, logo creation, ghostwriting services, etc.  

One of the many fraud websites was one called USPTOTrademarks.com  Obviously, that name would fool a lot of people into believing it was legit.  "The website (‘usptotrademarks.com’) uses the USPTO’s logo and colour scheme, while its About Us page claims to be “a project initiated by experienced lawyers and technologists” with “12 years of experience”." The website claims to be in "San Jose, California," but the operators were arrested in Pakistan.  How did it work?  They simply sent fake Trademark certificates to the applicants. "Even more concerningly, the report alleges that the company gave around 70% to 75% of clients “fake/fabricated” USPTO trademark certificates as part of the scam." 

Despite the flurry of arrests and allegations of fraud and extortion against these websites, some of them are still online to this day, such as USPTO Trademarks, a screen shot taken just now, shown below.  The entirety of U.S. Intellectual Property law is at stake -- at this juncture, the U.S. needs to step up and shut down these kind of scams with the same ferocity it uses to shut down kiddie porn sites.  Look at the site below-- could you blame people for being tricked into thinking this was legit?  

 

The U.S. Trademark Office has many times stated that it is not within their allowed activities to engage in prosecution of frauds or scams -- though the office does cooperate fully with authorities.  

This proliferation of scams harms the public, as well as harming the USPTO.  The only solution I can see that would work would be to require every trademark application to be filed by a licensed attorney and to have that attorney vouch for the legitimacy of the application and of his or her intent to conduct the full application process.  Federal courts require this of lawyers filing lawsuits.  It is time to do this with trademarks.  The trademark office is inundated with thousands of these fraudulent trademark applications, according to a follow-up article by Tim Lince of World Trademark Review (WTR).  In February of 2021, World Trademark Review published a list of the trademark applications made by 6 of these companies.  There are 81 pages of these trademark applications, with about 27 listed on each page!  The list gives the status of each application. Applying for a trademark is a process that takes at least a year and has various phases to it.  

If an application is going to fail, it usually takes at least a year from the date of filing for it to go DEAD on the USPTO database.  That's because a trademark application is filed and then sits for about 4 months waiting to be assigned to an Examiner.  If the Examiner issues a Nonfinal Office Action, the applicant is given 6 months to file a response.  If no response is filed or an incomplete or unsatisfactory response is filed, as would often be the case with an application not being tended to by a trademark lawyer, then it will go dead, usually several months after the 6 months deadline.  This means that applications destined to fail are on the USPTO Trademark Database as "LIVE" for about a year.  This harms and affects applicants who are trying to register trademarks that may conflict with the trademarks on the doomed applications -- their applications will be  put on hold to wait for the earlier-filed application to clear or go DEAD.  

This massive influx of trademark applications not properly made causes a huge amount of needless work for Trademark Examiners.  The Examiners are required to respond to each application as if it were legit.  Recently, however, the Trademark Office created a rule that short-circuits some of this.  The office has begun requiring an email address of the applicant.  The fraudulent companies have been in the practice of supplying their own email, probably to keep the applicant from finding out their application is not being handled properly.  After all, if a company is sending fake Trademark Certificates to 75% of its customers, the company does not want its customers in contact with the Trademark Office, where they may be alerted to the scam.  By having the Examiner request the trademark applicant's email address early on in the process, the Examiner can halt the process early on without progressing to the painstaking efforts of reviewing the application and writing a Nonfinal Office Action.

Google ads is at least partly to blame for this fiasco.  The fake and fraudulent trademark companies buy up key words and pay to have their ads at the top of the list when a person google-searches for trademark registration.  The ads offer very low prices, quick turnaround times -- none of which comport with the reality of trademark applications.  But, those being suckered into using these sites cannot be blamed -- the site says "USPTO Trademark," looks legit, etc. The REAL website of the US Patent and Trademark Office , USPTO.gov, to be truthful, is a cluttered mess.  It would be hard to blame the public for being attracted to a website that claims to be dealing in trademarks and makes it look as if the process is going to be easy, smooth, well-platformed, and affordable.  Should the US DOJ stop Google from running ads for fraudulent companies?  Better asked, WHY is the US DOJ allowing Google to run ads for fraudulent companies, companies that harm and make a mockery of the U.S. Trademark, Patent, and Copyright Offices?

The real USPTO website -- USPTO.gov  - is cluttered, incomprehensible, has a search engine that delivers poor results, and is not in any way user-friendly.  A person wants to register a trademark, and if they do somehow manage, against all odds, to find the real USPTO website, they find up front a very dated photo of Jim Henson and the Muppets, lots of information on Covid-19, and cluttered verbiage with hundreds of links.  This ludicrously poor website design drives people to using fake and fraud websites that at least appear to offer streamlined solutions.  People get lured by absurdly low prices that, in fact, do not even cover the actual trademark registration fees.  Getting a trademark is like getting a university degree -- you can either pay a lot of money and spend a lot of time and work and get a genuine trademark and the certificate that goes with it, or you can pay $69 and fill out an online application and get a fake certificate.  

Screen shot of half of the front page of the real USPTO Website, below.  


My suggestions on how to deal with the current mess at the USPTO:

1. Require all trademark applications to be made only by licensed lawyers.  Most successful applications are already made by licensed lawyers, so all this would really do is get rid of the fraud applications and the nonsensical or poorly-made applications.  Have a list of lawyers who practice before the Trademark Office, and publish it, so the public knows how to find a real trademark lawyer.

2. Have the DOJ take aggressive action against fraudulent Trademark websites and companies, domain name ownership that confuses the public, etc.

3.  Have a public awareness campaign on what trademark is, how much it costs, and the rather complex process involved in getting a trademark.

OTHER TRADEMARK SCAMS.  

Trademark applicants, even those making legitimate applications, are besieged by mail from fake companies demanding payment for fake trademark services.  The mail usually looks like bills and comes from addresses that include company names and addresses that sound somewhat legit.  These bills demand payment of hundreds, or usually thousands of dollars.  I have come across people online who have been paying hundreds of dollars each month to "maintain" their trademark.  These people have been duped by realistic-looking bills.  IF.. if these people had registered their trademarks using a real lawyer, they could ask the lawyer about the bill, and the lawyer would tell them, "No, that is fake.  Don't pay it."  

The U.S. Trademark Office is very well aware of these scams.  The Office, unfortunately, refers to them as "misleading notices."   "Misleading notices" is far too soft a term for fake bills that cause people to pay thousands of dollars to a scam company.  "Beware of all types of offers and notices not from the USPTO. In March 2017, the operators of a private company—the Trademark Compliance Center—were convicted of money laundering in a trademark renewal scam." https://www.uspto.gov/trademarks/protect/caution-misleading-notices  

The USPTO provides a list of the names of some of the companies that have been sending out fake bills and notices demanding money.  You can click on any of the links to see actual examples of the misleading notices.

Solicitations originating within the United States

Solicitations originating outside the United States


This video gives additional useful information about these scam solicitations that are sent to most everyone that applies for a trademark, whether or not the applicant uses a trademark lawyer.

Justice and Justin Bieber

 


Justice and Justin Bieber

by Susan Basko, esq.

Justin Bieber has been sent a Cease and Desist by the French electronic music duo called Justice.  Justice registered the trademark on the left, in the French trademark system, but not in the U.S.  The Justice duo claims that the cover of Justin Bieber's latest album, called Justice, seen on the right, infringes upon their copyright.  

Let's look at why this claim is not likely to succeed.  There are many reasons.  First, Justice did not register their trademark in the U.S.  Second, Justin Bieber has not (yet) filed a trademark on "Justice."

Third, "justice" is a generic term, and this electronic duo has no hold or control over the name.  If their name were unique, such as "Megadeth" they might have some legit claim over the word.  As of now, there are 1014 live trademarks in the US trademark system that contain the word, "justice."

Fourth, Justice claims that Bieber's design on the word, "justice" is too similar to theirs, because they claim the "t" is elongated to create a Christian cross.  Look at the two designs.  Justice uses a graffiti writing style, with little arrows coming off the ends of the letters.  Bieber uses a totally different typeface, a very sleek, chunky, modern sans serif lettering. 

The overall line of the lettering on the Justice trademark swoops down and then up again.  Bieber's lettering has a straight bottom line.  In fact, Bieber's letter "t" is not elongated and has the same bottom line as the rest of his letters.

If we were discussing copyright, which is different from trademark, we would note that font styles do not have copyright.  Also, titles of albums do not have copyright.  Also, one cannot copyright a single word.  Also, a common symbol such as a cross does not have copyright. 

Then there is the idea of consumer confusion.  I doubt any fans of Justin Bieber's music have ever heard of the electronic duo, Justice.  Justice's fans have likely heard of Justin Bieber, but they are not likely to confuse these two highly divergent music artists.

I did a search of the US Trademark database to find trademarks that incorporate the word "justice" and also a design of a cross.  I found a short list, and most of them are dead.  

Then, I looked at each of these. I found three that had any possible similarity to the Justice trademark or to Justin Bieber's album cover.  This is the first -- the Medical Justice League, with a crest including a cross.  There is no similarity to either Justice's trademark or Justin Bieber's album cover design.


Next, there is an abandoned trademark using the word "justice" and a cross. Again, not similar.


Third, there is a live trademark for insurance claims that is uses a cross and the word, "justice."  It is the most similar to the French Justice music trademark and to Bieber's album cover design.  Even still, it is not similar to either.  The point here is that anyone can use the word "justice" in a trademark, along with a Latin Cross, and this does not mean it infringes.


I've read that Justin Bieber has a "Justice" clothing line planned.  He should probably get busy and file a trademark on that, before someone beats him to it.

There's another issue some people are complaining about.  Justin Bieber used some wording from Dr. Martin Luther King, Jr., as lyrics in some of his songs.  He did so with the blessing of the King family.  There is a triple blessing to Bieber using MLK's words as lyrics.  The family/ estate holds the copyright on many of Dr. King's famous writings and speeches.  They use the copyright to protect the integrity of the writings, as well as to make money for the family and estate.  This is most helpful since Dr. King died very young and was therefore not around to support his family.  His words lived on, and protected by copyright, have helped support the family.  

Some people have complained that Justin Bieber named Dr. Martin Luther King, Jr as "co-writer" on at least one song.  This is legally a correct thing to do.  The lyrics are written by MLK and therefore, he is a co-songwriter.  This also means that MLK's family or estate is entitled to publishing royalties on the song.  That could add up to quite a bit of money for the family.  

Justin Bieber is not usurping or misusing the MLK name, he is introducing MLK's words and ideas to a new generation.  He is helping spread MLK's ideas about justice.  By doing so, Justin Bieber is helping the MLK family and estate to make money.  By doing so, Justin Bieber is promoting justice in ways that are available to him as a very famous music artist.  





Proud Boys, Enrique Tarrio, Jason Lee Van Dyke, and Milo Whats-his-Name

Proud Boys Trademark Specimen

 Proud Boys, Enrique Tarrio, Jason Lee Van Dyke, and Milo What's-his-Name

by Susan Basko, esq.

As explained here back in April 2018, Texas lawyer Jason Lee Van Dyke registered the trademark on the words, "Proud Boys" for "Association services, namely, organizing chapters of a fraternity and promoting the interests of the members thereof" with his own legal entity, JLVD Holdings L.L.C., as the owner of the trademark.  At the time, Jason Lee Van Dyke was acting as a lawyer for the Proud Boys group.  You can read about that HERE.

Since then, Jason Lee Van Dyke was ousted from or quit the group.  Gavin McInnes, founder of the group, also quit.  

Subsequently, Enrique Tarrio was elected to head the Proud Boys.  Recently, Enrique Tarrio was revealed to be a long-time FBI Confidential Informant, which you can read about at Reuters, The Guardian, New York Times, and many other locations.

On January 6, 2021, a group of rioters entered the U.S. Capitol in Washington, D.C., causing property damage and resulting in about 6 deaths of police and participants.  Various members of the Proud Boys have been arrested in connection with the attack.  You can read about that at The Guardian.

Jason Lee Van Dyke, the lawyer who owns the Proud Boys trademark, has issued a letter to Enrique Tarrio rescinding a license granted to him to use the Proud Boys trademark.  See below.  






Now, Milo Yiannopoulos has offered to buy the trademark from Jason Lee Van Dyke and give it to the Proud Boys membership, if Enrique Tarrio agrees to quit the leadership, other than being the head of a local chapter.





WHICH BRINGS UP THE TOPIC -- IS THIS LEGALLY POSSIBLE?  I think so, yes, as an assignment of trademark.  Jason Lee Van Dyke would have to agree to assign the trademark and the organization would have to agree to have it assigned to it.  Assignments are done using forms at the U.S. Trademark Office.  The reason I think it would be legal is because it would still be the exact same organization using and benefiting from the trademark.  Then, they'd file an ETAS form and pay a $40 fee
Note: This is NOT legal advice.  You are not my legal client.  Blah blah blah, etc.

WILL THIS HAPPEN?  We shall see.  

What is Milo's interest in the Proud Boys?  Who knows.  He has written that he wants to gift the trademark to the group so "the fraternity never again has to beg someone else to use its own name."  

The World Trademark Review recently published an article in which I am quoted, entitled, "Proud Boys™ – far-right group's trademark could face cancellation, legal experts claim."  The article is pay-walled, but if you register, it is a well-written article and worth reading. 





Marijuana and Trademark

 


Marijuana and Trademark

by Susan Basko, esq.

The U.S. Trademark Office will not register trademarks on any marijuana-related goods or services.  Period.  What the Trademark Office will do is jack around those who are foolish enough to try to register a trademark on marijuana-related goods or services.  

The reason the Trademark Office will not register trademarks on any marijuana-related goods or services is because marijuana is federally illegal, even though it is legal in numerous U.S. States.  It is possible in those States that, if the State itself has a trademark office, such trademarks might be registered there.  I don't know; I have never tried it, but in theory this makes sense to me.

(Note: There is a tiny exception in the trademark law for cannabis-derived products with negligible THC content, such as CBD oil that has less than 0.3 THC per dry weight.  And then, it cannot be an edible or touted as being a cure for anything.)

Now, you may ask, how does the Trademark Office jack around those who apply for trademarks on their goods and services?  Here is a cautionary tale. 

I got an email from a company called Camp Nova, which is a delivery service for marijuana and edibles. The photo above is from one of their emails, listing some of the celebrity brands of marijuana that Camp Nova sells.  So naturally, I looked up to see if Camp Nova had attempted to register a trademark on its name.  And yes, the owner of the company made two do-it-yourself attempts to register a trademark.  Trademark is not a do-it-yourself activity, ever.  If he had asked any credible lawyer, they would have told him that the trademark office does not register trademarks on any goods or services related to marijuana, period.

The first attempt at trademark registration, Camp Nova called its service: "Computer software platforms, downloadable, for mobile devices and herbal marketing." The Trademark Examiner sent out an Office Action saying the specimen provided was not correct for a software platform and that the goods were not specific enough. Camp Nova did not respond and the trademark application went DEAD.

About a year passed, and the owner of Camp Nova tried a second do-it-yourself trademark application.  This time, he called his service: "On-line wholesale and retail store services featuring hemp."   When he was searching for an identification for his goods or services, perhaps he noticed that there were no listings whatever for "marijuana" or for "cannabis."  Perhaps that still did not clue him in that the U.S. Trademark does not register trademarks on marijuana-related goods or services, or perhaps he thought he could sneak in by calling it hemp. However, the Trademark Examiner would look at the Camp Nova website and see it was a marijuana delivery service.

Now, upon seeing that Camp Nova was a marijuana delivery service, one would think that the Trademark Examiner might simply send Camp Nova a notice saying something like, "Sorry, the Trademark Office does not register trademarks on marijuana-related goods or services because marijuana is federally illegal."  Instead, the Trademark Examiner sent out an Office Action telling Camp Nova they have 6 months in which to file a Reply to the Office Action and they must answer ALL of the questions that are shown below in the highlighted area.  Please notice that if Camp Nova answers these questions, they will be admitting under sworn written oath, that they are committing a whole roster of federal crimes.

Below is a large portion of the Office Action, directly quoted.  Notice the Questions numbered 1-11, which I have highlighted to make them easier to find.  Quite seriously, only a fool would answer these questions.
And now, I hope you see why Trademark Registration is not a do-it-yourself project.

The Office Action asks, "If so, do the cannabis or cannabis derivative used (or to be used) in these goods contain more than 0.3 percent delta-9 tetrahydrocannabinol (THC) on a dry weight basis?"  Will Camp Nova respond, "Why yes, we sell Ice Cream Cake that has one hundred times that much THC, at 30% THC"?

The Nonfinal Office Action is dated September 4, 2020, which gives Camp Nova till February 4, 2021 to respond.  Will Camp Nova be dopey enough to respond and put it in sworn writing that they are selling Lemon Kush with 20% THC and Ice Cream Cake at 30% THC?  I hope not, but I will be watching their trademark file to find out.

Camp Nova ad - Ice Cream Cake

Camp Nova ad - Lemon Kush


NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  September 04, 2020

 

 The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

SUMMARY OF ISSUES

  • FDCA Refusal – No Bona Fide Intent to Lawfully Use in Commerce as of Filing Date;
  • Controlled Substances Act Compliance Advisory
  • Information requirement
  • Specimen requirement

FDCA Refusal

 

Registration is refused because applicant does not have a bona fide intent to lawfully use the applied-for mark in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907. 

 

To qualify for federal trademark/service mark registration, the use of a mark in commerce must be lawful.  Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (stating that “[a] valid application cannot be filed at all for registration of a mark without ‘lawful use in commerce’”); TMEP §907; see In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); Coahoma Chemical Co., Inc. v. Smith, 113 USPQ 413 (Com’r Pat. & Trademarks 1957) (concluding that “use of a mark in connection with unlawful shipments in interstate commerce is not use of a mark in commerce which the [Office] may recognize.”).  Thus, the goods/services to which the mark is to be applied must comply with all applicable federal laws.  See In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016) (citing In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993) (noting that “[i]t is settled that the Trademark Act’s requirement of ‘use in commerce,’ means a ‘lawful use in commerce’”)); In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907. 


The items or activities listed in the application in connection with which the mark is intended to be used involve a per se violation of federal law.  See In re Brown, 119 USPQ2d at 1352.  The Federal Food, Drug, and Cosmetic Act (FDCA) prohibits the introduction or delivery for introduction into interstate commerce of a food to which has been added a drug approved under Section 355 of the Act or a biological product licensed under 42 U.S.C. §262.  21 U.S.C. §331(ll); see also 21 U.S.C. §321(ff) (indicating that a dietary supplement is deemed to be a food within the meaning of the FDCA and does not include an article that is approved as a new drug under 21 U.S.C.  §355, certified as an antibiotic under 21 U.S.C. §357, or licensed as a biologic under 42 U.S.C.  §262).


Cannabidiol (CBD), a chemical constituent of the cannabis plant, was the subject of substantial clinical investigations before it was marketed in foods or as dietary supplements.  On June 25, 2018, the U.S. Food and Drug Administration (FDA) approved the first prescription pharmaceutical formulation of plant-derived CBD, Epidiolex®, for the treatment of two rare forms of epilepsy, Lennox-Gastaut syndrome and Dravet syndrome.  The Drug Enforcement Administration (DEA) placed Epidiolex® on schedule V of the CSA on September 27, 2018.  Nevertheless, marijuana and CBD derived from marijuana remain unlawful.  No other cannabis-derived drug products have been approved by the FDA.  Under the FDCA, any product intended to have a therapeutic or medical use, and any product (other than a food) that is intended to affect the structure or function of the body of humans or animals, is a drug.  21 U.S.C. § 321(g)(1)  An unapproved new drug cannot be distributed or sold in interstate commerce unless it is the subject of an FDA-approved new drug application (NDA) or abbreviated new drug application (ANDA). 21 U.S.C. §§ 331(d) and 355(a), (b), & (j); see also FDA Regulation of Cannabis and Cannabis-Derived Products: Questions and Answers https://www.fda.gov/news-events/public-health-focus/fda-regulation-cannabis-and-cannabis-derived-products-questions-and-answers copy attached.


Applicant’s goods and/or services are broad enough to encompass products that consist of, or include, items or activities that are or were prohibited by the FDCA, namely, “On-line wholesale and retail store services featuring hemp.”


As the applicant has identified that its services feature hemp, it is presumed that the goods also contain the prohibited substance of CBD.  Since CBD is an extract found in hemp plants, and since the applicant has not specifically excluded CBD from the Identification, it is presumed that the applicant’s services featuring goods containing CBD, and thus the FDCA refusal is applicable at this time

It is unlawful to introduce food to which CBD, an “article that is approved as a new drug,” has been added into interstate commerce or to market CBD as, or in, dietary supplements, regardless of whether the substances are hemp-derived. 21 U.S.C. §§321(ff)(3)(B)(ii), 331(d), 355(a); see also 21 U.S.C.  §352(f)(1) regarding mislabeled drugs.  See also Statement from FDA Commissioner Scott Gottlieb, M.D., on signing of the Agriculture Improvement Act and the agency’s regulation of products containing cannabis and cannabis-derived compounds.

 https://www.fda.gov/NewsEvents/Newsroom/PressAnnouncements/ucm628988.htm copy attached. 

 

In order for an application to have a valid basis that could properly result in a registration, the use of the mark has to be lawful.  See In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976)  Because introduction of such goods into commerce was not lawful as of the filing date, applicant did not have a bona fide intent to use the applied-for mark in lawful commerce in connection with such goods and/or the identified services.  See e.g. In re JJ206, LLC, 120 USPQ2d 1568, 1569 (TTAB 2016) (“where the identified goods are illegal under the federal Controlled Substances Act (CSA), the applicant cannot use its mark in lawful commerce, and ‘it is a legal impossibility’ for the applicant to have the requisite bona fide intent to use the mark.”); see also In re Brown, 119 USPQ2d, 1351-1352; TMEP §907.   

 

CONTROLLED SUBSTANCES ACT COMPLIANCE ADVISORY

 

Use of a mark in commerce must be lawful use to be the basis for federal registration of the mark.   Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (stating that “[a] valid application cannot be filed at all for registration of a mark without ‘lawful use in commerce’”); TMEP §907. Thus, the goods and/or services to which the mark is applied must comply with all applicable federal laws.  See In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016) (citing In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993) (noting that “[i]t is settled that the Trademark Act’s requirement of ‘use in commerce,’ means a ‘lawful use in commerce’”)); In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907.

 

Cannabidiol (CBD) is a nonpsychoactive constituent of the cannabis plant. Goods containing CBD derived from cannabis that meets the definition of “marijuana” are illegal under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971. On December 20, 2018, the CSA was amended to remove “hemp” from the definition of “marijuana” and specifically exclude “tetrahydrocannabinols in hemp (as defined under section 297A of the Agricultural Marketing Act of 1946)” from Schedule I, 21 U.S.C. §812(c)(17). See the Agriculture Improvement Act of 2018, Pub. L. 115-334 (the 2018 Farm Bill), which amends the Agricultural Marketing Act of 1946 (AMA).

 

Applicant’s identified goods and/or services include: On-line wholesale and retail store services featuring hemp.”

 

To the extent applicant’s services contain goods that are derived solely from cannabis plants that meet the current statutory definition of “hemp,” such goods may be lawful.

 

Applicant must amend the identification of goods and services to specify that all cannabidiol-containing items are “solely derived from hemp with a delta-9 tetrahyrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis.” 

 

Applicant may adopt one of the following limitations and amend the identification of goods/services accordingly:

 

Class 035:  “On-line wholesale and retail store services featuring hemp with a delta-9 tetrahyrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis

 

Applicant should note, however, that even if applicant amends the application as outlined above, such amendment will not be sufficient to overcome the additional FDCA refusal set forth immediately below.

 

Applicant is advised that failure to amend the identification of goods/services will be grounds for refusal on the basis that the mark, as used/intended to be used in connection with the identified goods/services, is not lawful use in commerce under the CSA.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907.  

 

SCOPE ADVISORY: Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

FURTHER INFORMATION ABOUT GOODS REQUIRED

 

To permit proper examination of the application, applicant must submit additional information about applicant’s goods.  See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).

 

In addition, applicant must submit a written statement indicating whether all the goods, including the Controlled Substances Act (CSA) and the Federal Food, Drug, and Cosmetic Act (FDCA), 21 U.S.C. §§801-971 (see questions below). See 37 C.F.R. §2.69; TMEP §907.

 

Applicant must respond to the following questions and/or requests for documentation to satisfy this request for information:

 

1.      Do or will applicant’s identified goods include any oils, extracts, ingredients or derivatives from the plant Cannabis sativa L (also known as cannabis, marijuana or hemp), including CBD?  If so, please specify.

2.      If so, do the cannabis or cannabis derivative used (or to be used) in these goods contain more than 0.3 percent delta-9 tetrahydrocannabinol (THC) on a dry weight basis?

3.      If applicant has any documentation relative to the THC content of the oils, extracts or derivatives used or to be used in the goods, please submit them with the response.

4.      If applicant’s goods do or will contain oils, extracts, ingredients or derivatives from the plant Cannabis sativa L which has more than 0.3 percent delta-9 tetrahydrocannabinol on a dry weight basis, identify the part or parts of the plant used in obtaining the oils, extracts, ingredients or derivatives.

5.      If the “hemp” is grown in the United States of America, was the hemp used in the goods obtained from an authorized grower or supplier of industrial hemp from a hemp growing pilot program set up under the 2014 Farm Bill?

6.      Do or will applicant’s identified International Class 5 goods include CBD?

7.      If the answer to question 6 is “yes,” do or will applicant’s identified International Class 5 goods include CBD which is derived from, oils, extracts or ingredients from plants other than Cannabis sativa L?

8.      If the goods contain CBD, will there be more than a trace amount of CBD in the goods, that is, more than 50 parts per million (PPM)?  Please submit documentation of the CBD concentration of the goods.

9.      Is applicant currently seeking FDA approval for its goods in International Class 5?

10.  Upon information and belief do applicant’s goods comply with the CSA?

11.  Upon information and belief do applicant’s goods comply with the FDCA?


Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).