Securing federal cannabis trademarks is a unique challenge. In a world of federal marijuana prohibition, federal registration of trademarks remains, in nearly all respects, a non-starter. Today’s Cannabis Case Summary illustrates how such a case plays out when owners of intellectual property go forward and attempt to obtain federal intellectual property protections. Spoiler alert: it did not go well for the applicant.
Last month the Trademark Trial and Appeal Board (TTAB) affirmed denial of a would-be registrant’s marks used in connection with the sale of pre-loaded disposable cannabis oil vaporizers marketed as “JuJu Joints.” While some sly cannabis business applicants attempt to pass their registrations off using vague terms like “herbs” or “aroma therapy,” that was not the case here. The applicant, JJ206 LLC, filed to register the marks “Powered by JuJu” and “JuJu Joints” with the intent to use the marks in connection with a “smokeless cannabis vaporizing apparatus, namely, oral vaporizers for smoking purposes.” These marks were rejected by the Examining Attorney both initially and on appeal before the matter reached the TTAB, which affirmed the prior denials.
JJ206 made a number of arguments in support of its application, none of which were persuasive to the Board.
JJ206 first argued that JuJu Joints are in the same “league” as e-cigarettes and therefore should be afforded similar protections. The TTAB quickly dispensed with this argument by citing the Trademark Act’s clear language requiring that an applicant have a “bona fide intent to use the mark in lawful commerce,” and the Controlled Substances Act’s (CSA) prohibition of marijuana as a Schedule I drug with no lawful use.
Next, JJ206 made a type of common law trademark argument, claiming that denial of registration would cause confusion for consumers as to the origin and consistency of potentially competing products. The TTAB did not reach the factual merits of JJ206’s confusion argument, instead hanging its hat on the necessity of lawful use in commerce.
Additionally, JJ206 pointed to other marks that have been granted registration despite their relationship to cannabis. The TTAB distinguished these prior registrations, however, on the basis that they were not used in connection with federally illegal commerce involving the cannabis plant. In fact, these registrations were granted to companies that sell products like hemp lotion and certain seed and stalk extracts permitted by federal laws. Because JJ206 sought to register a mark attached to a product explicitly intended to be used for consumption of cannabis vapor, the TTAB rejected their argument. Similarly, JJ206 pointed to pending trademark registrations “in support of the marijuana industry.” The TTAB dismissed this argument as well because registrations are, by law, considered independent of other applications and the pendency of an application does not speak to its lawfulness or likelihood of approval.
Finally, the TTAB addressed a trio of theories familiar to proponents of recent cannabis reforms. First, that JJ206’s products distributes its products only within states where cannabis is legal on the state level. Second, that there is a legitimate medical use of cannabis. And third, that JJ206 operates in accordance with the Cole Memo’s directives by working only in compliance with state cannabis laws. In response to each, the TTAB noted the continued illegality of cannabis under the CSA, and emphasized that lawful use in commerce under federal law is a fundamental and inescapable prerequisite to federal trademark protection.
As this case illustrates, federal trademark registration remains all but impossible under federal law for cannabis products and it likely will until there is reform at the federal level. Until then, cannabis businesses are best advised to seek state-level trademark protection – if they can, and to speak with their trademark attorney about the possibility of registering their marks for ancillary goods and services at the federal level.
In re JJ206, LLC, dba JuJu Joints. [Link]
NOTE: The above is part of our plan to summarize all cannabis civil cases with a published court decision. By civil case, we mean any case that involves cannabis or the cannabis industry that is not a strictly criminal law matter. These cannabis case summaries are intended both to keep you up to date on cannabis laws as interpreted by the courts and also to serve as a resource for anyone conducting cannabis law research. We also will seek to provide key unpublished cannabis law decisions as well, when available.