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.
|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
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.
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).