Private Business Counsel

The importance of protecting one’s brand name is common knowledge across all industries (See clip of Frank Lucas in American Gangster). In a precedential decision the Trademark Trial and Appeal Board (TTAB) recently declined another mark within the marijuana industry, holding that the United States Patent and Trademark Office (USPTO) will permit registration of marijuana-related trademarks if the product qualifies as drug paraphernalia under the federal Controlled Substances Act (CSA).

The CSA defines drug paraphernalia as “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].” 21 U.S.C. § 863.

In In re JJ206, LLC, dba JuJu Joints, the trademark applicant sought registration on the Principal Register for the marks “POWERED BY JUJU” and “JUJU JOINTS” in standard characters, for a “smokeless marijuana or cannabis vaporizer apparatus” among other things.

The USPTO’s Examining Attorney first refused registration of the applications based upon the absence of a bona fide intent to use the mark in lawful commerce under Sections 1 and 45 of the Trademark Act. See 15 U.S.C.  § § 1051, 1127. In JuJu Joints, the TTAB upheld the Examining Attorney’s decision for the same reason, stating that the products at issue remain illegal under the CSA, regardless of whether such devices are legal under individual states’ laws.

This precedential decision came down just two weeks before laws reforming marijuana policy prevailed in eight of the nine states where it was on the ballot (four considered legal medical marijuana and five decided whether to legalize recreational marijuana). Arizona did not approve its law, but California, Massachusetts, Nevada and Maine joined Washington, Colorado, Oregon, and Alaska in legalizing cannabis for recreational use.

With more states passing laws that legalize recreational marijuana use, the TTAB’s decision places a hardship on trademark applicants, such as rapper and entrepreneur Snoop Dogg, who are seeking to be pioneers in the marijuana business. Snoop Dogg filed his original application in January 2015, for the mark “LEAFS BY SNOOP” presented on three lines and superimposed over a golden leaf design. His first application limited use to “cigarette lighters not made of precious metals,” but earlier this year, Snoop filed additional applications for the golden leaf logo to also be used for potting soil, blunts, and blunt wraps, among other things.

Prior to the TTAB’s recent decision, Snoop was already facing opposition from Maple Leaf Sports & Entertainment (MLSE), the owner of the Toronto Maple Leafs ice hockey team. MLSE filed papers in the USPTO arguing that

[the] proposed LEAFS BY SNOOP mark is confusingly similar to the Maple Leafs’ LEAFS marks. [Snoop] has appropriated the entirety of the LEAFS marks in his LEAFS BY SNOOP mark … such similarity is exacerbated by the design elements of the LEAFS BY SNOOP mark. The applicant’s design mark uses a white font enclosed within a wide-shaped leaf with three large segments at the top of the mark, a design echoing and highly similar to the Maple Leafs’ marks.

Nevertheless, it is possible that the USPTO could refuse registration for some, if not all, of the rapper’s marks on its own accord, based on the goods and services they’ve been assigned for use in. It will be interesting to see how far the USPTO extend the JuJu Joints decision, and if items such as “blunts,” “blunt wraps,” “potting soil,” or “cigarette lighters not made of precious metals” qualify as “drug paraphernalia” under the CSA when the applicant’s mark is used mainly in the marijuana industry. One would expect refusal on “blunts” and “blunt wraps,” but whether marks will be approved for uses on “potting soil” and lighters remains unclear. I’m sure entrepreneurs within the legal marijuana industry will be paying close attention to future decisions.