Back in September Drake, through his Dream Crew business, applied for U.S. federal trademark protection for the warning symbol essential on all recreational cannabis merchandise that include THC by the Well being Canada. The symbol resembles a red cease sign with a black cannabis leaf and the letters “THC” prominently displayed:
The application specified the following goods:
- Herbs for medicinal purposes
- Boots Coats Dresses Gloves Hats Hoodies Jackets Jerseys Shirts Footwear Shorts Sneakers Suits Sweat pants Sweatshirts T-shirts Ties as clothes Track suits Trousers Undergarments Waist belts
- Raw herbs
- Herbs for smoking
The USPTO examining lawyer assigned to this application refused registration on 3 grounds, all of which are exciting and relevant to would-be cannabis trademark applicants.
Very first, registration was refused due to likelihood of confusion with an current trademark registration in Class 25, which covers apparel. This current trademark registration is for the mark THC. Simply because the literal element of the applicant’s mark was identical to the registered THC word mark, the examining lawyer deemed the marks probably to trigger customer confusion, and denied registration for apparel. This is an illustration of why conducting a trademark clearance search prior to filing your trademark application is a fantastic notion.
Second, the application was denied as to the other 3 classes of goods specified (herbs) simply because “applicant did not have a bona fide intent to lawfully use the applied-for mark in commerce as of the filing date of the application.” As we’ve covered prior to, in order to qualify for federal trademark protection, the use of a mark in commerce will have to be lawful (Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, three USPQ2d 1306, 1308 (Fed. Cir. 1987)). Right here, the examining lawyer did some digging and rapidly discovered that the applicant was a business owned by Drake, who had lately partnered with a Canadian cannabis business to create marijuana. The wording of the 3 classes encompassing herbs was broad sufficient to incorporate cannabis, which is not lawful below U.S. federal law, and is not eligible for trademark protection.
But this leads us to the third and probably most exciting grounds for refusal. which requires the nature of the applied-for mark itself. The logo specified in the application is identical to the symbol mandated below Canadian law to indicate that goods bearing the symbol include THC. This is a warning symbol intended to alert prospects that cannabis merchandise include much more than 10 micrograms of THC per gram. The examining lawyer asserted that simply because “the symbol is intended to be made use of merely to convey information and facts about the material content material of the solution,” it serves no supply identifying function.
The examining attorney’s assertion is an significant foundation of trademark law: In order to be eligible for trademark protection, a mark will have to basically function as a trademark, which means that it will have to basically indicate the supply of the specified goods. The examining attorney’s considerations right here incorporated (1) the significance of the symbol, (two) the nature of the symbol’s use in the relevant marketplace, and (three) the impression developed when the mark is made use of in connection with the identified goods. Eventually, the examining lawyer declared that:
[b]ecause customers are accustomed to seeing this symbol made use of in this manner, when it is applied to applicant’s goods, they would perceive it merely as informational matter indicating that the goods are comprised of THC derived from cannabis or marijuana.
These are all worthwhile lessons in what can and can not be eligible for U.S. federal trademark protection, and illustrate the ongoing challenges faced by the cannabis market in establishing sturdy brands that are eligible for federal protection.