As we leave 2018 behind us, there were a number of high-profile states and countries which entered the adult-use cannabis marketplace. More cannabis companies, formerly illegal, find themselves now legal in the streams of commerce. However, cannabis product-specific applications for trademarks and service marks remain elusive as the USPTO has maintained a fairly strict examination guideline for refusing a mark that does not have a bona fide use, or intent to use, that mark lawfully in commerce (TMEP 907;[1] 15 U.S.C. §1051). Of course, cannabis, or marijuana, remains on the Controlled Substance Act (CSA)’s schedule of controlled drugs (21 U.S.C. §812), and therefore, as a government agency, the USPTO must adhere to the currently enforced federal statutes.
Several trademark applications for cannabis product-specific marks have been refused because of this policy. Of the 1,723 active trademark applications submitted that are still pending or registered with the term “CANNABIS” composing or as part of the mark, only 179 have been registered. Countless others have been abandoned for a variety of reasons, but most had been refused registration based on a lack of a bona fide lawful use in commerce.
For example, NOYA CANNABIS, a cannabis dispensary company, filed for its mark in November 2017, but to date, it is still languishing under examination at the USPTO. An office action mailed July 27, 2018 indicates a number of refusals, including a §45 non-bona fide intent to lawfully use in commerce refusal. (There is also a more substantive §2(d) likelihood of confusion refusal, but this post will focus on the lawful use in commerce refusal.) The identification of goods and services is for two classes:
“Medical marijuana, cannabis, cannabis oils, and cannabis derivatives, namely, cannabis capsules, cannabis sprays, edible oils, edible butters and hashes, resins, concentrates, and oils, hashes and waxes for smoking, all for the temporary relief of seizures, for the treatment and relief of nausea caused by chemotherapy, muscle spasms caused by multiple sclerosis, nerve pain, loss of appetite, anxiety, stress, fatigue, pain, nausea, vomiting, muscle tension, muscle spasms, tension, epilepsy, glaucoma, multiple sclerosis, arthritis, Parkinson’s disease, cancer, gastrointestinal illness, spinal cord injury, anxiety, bi-polar disorder, depression, insomnia, autoimmune disorders, to provide mood enhancement and an improved sense of well-being Electronic publications, namely, newsletters, brochures, reports and guides in the field of medical marijuana, cannabis and cannabis oils; Bags and cases specially adapted for holding or carrying medical marijuana, cannabis and cannabis oils and accessories; Printed publications, namely, newsletters, brochures, reports and guides in the field of medical marijuana, cannabis and cannabis oils; Clothing, namely, casual shirts, t-shirts, sweaters, hats,” in International Class 28, and
“Sales of medical marijuana, cannabis, cannabis oils and cannabis derivatives; sales of consumable products and accessories, namely, pipes, cigarette rolling papers, water pipes, grinders, vaporizers and scales; Operation of an online bulletin board for publishing of information about benefits of medical cannabis and marijuana, research related to medical and cannabis and for users to provide commentary about the content or about subjects relating thereto; Operation of an online bulletin board for registered users to participate in discussions, provide and obtain feedback from other registered users, form virtual communities, and engage in social networking in the field of medical marijuana; Educational services and patient educational services, namely, audio, visual and print materials, seminars, workshops, classes and training sessions all in the field of medical marijuana and cannabis; Medical counselling in the field of medical marijuana; providing medical information in the field of medical marijuana; operation of a wellness centre for medical marijuana patients providing physician referral services, medical marijuana counselling services and educational services in the field of medical marijuana; Consulting services in the field of medical use of cannabis; Operation of a website providing information about benefits of medical cannabis and marijuana and research related to medical cannabis and marijuana; operation of a website providing information featuring the ratings, reviews and recommendations on medical marijuana and cannabis products for commercial purposes posted by users; Operation of a website providing information in the field of medical marijuana, and regarding indications and effects of particular cannabis strains,” in International Class 35.
One interesting aspect is that the Trademark Examiner has indicated alternatives based on medical marijuana use which has, at least, been tolerated by federal drug enforcement officials, and therefore, would be a lawful use in commerce of an applied-for mark. This is a hopeful sign that the USPTO has softened its examination procedures for handling prosecution of marks dealing directly with the cannabis plant, including its sale and distribution. The applicant, Radicle Cannabis Holdings of Hamilton, Ontario, Canada, is a Canadian-based dispensary company. (Adult-use cannabis in Canada commenced on October 18, 2018.) Radicle must now file a proper response to the Office Action for NOYA CANNABIS by January 27, 2019, or the application will be abandoned. We should know more once a response has been filed.
Other applications for ancillary goods related to the cannabis industry have been deemed legitimate use in commerce, and therefore, been registrable as federal marks, assuming all other substantive refusals have been addressed. These include CANNABIS design mark for “Stickers,” in International Class 16 (paper goods), registered as U.S. Trademark Registration No. 5,488,579, on June 5, 2018.
Also, I AM CANNABIS was registered as U.S. Trademark Registration No. 5,566,612, on September 18, 2018, for “Clothing, namely, athletic sleeves; Bottoms; Hoodies; Jackets; Jerseys; Ties; Tops; Wristbands,” in International Class 25 (clothing wear).
Applications for marks for ancillary services are also getting registered. CANNABIS ISN’T ABOUT GETTING HIGH; IT’S ABOUT GETTING WELL was registered as U.S. Service Mark Registration No. 5,589,692, on October 23, 2018, for “Financial services, namely, operation and management of hedge funds, commodity pools and other collective investment vehicles, and trading for others of options, futures, derivatives, debt instruments and commodities,” in International Class 36 (insurance and financial services). Also, CALIFORNIA CANNABIS BUSINESS CONFERENCE was registered as U.S. Service Mark Registration No. 5,624,332, on December 4, 2018, for “Educational services, namely, conducting business seminars in the field of best business practices and operations in the legal cannabis industry and distribution of downloadable course and educational materials in connection therewith,” in International Class 41 (education and entertainment services).
In summary, obtaining a trademark registration through the USPTO has always been difficult for cannabis-related applicants which is based primarily on the scheduling of cannabis as an illegal drug at the federal level. However, based on recent prosecution histories, there does appear to be a roadmap for some types of commercial uses that will pass examination before the USPTO. In this respect, there is reason for optimism for further relaxation of USPTO examination guidelines towards cannabis trademark and service mark applications in the long-term.
If there are any questions on cannabis-related trademark prosecution, please feel free to contact Yonaxis.
[1] See 37 C.F.R. §2.69: Compliance with Other Laws: “When the sale or transportation of any product for which registration of a trademark is sought is regulated under an Act of Congress, the Patent and Trademark Office may make appropriate inquiry as to compliance with such Act for the sole purpose of determining lawfulness of the commerce recited in the application.”