TTAB Reiterates Refusal to Register Marks for Marijuana ProductsNovember 4, 2016

Last week, the Trademark Trial and Appeal Board (“TTAB‚¬) issued a precedential ruling rejecting registration on the Principal Register of two marks on the basis that the goods for which the marks were to be used were unlawful.

The Applicant, JJ206, LLC, d/b/a JuJu Joints (“the Applicant‚¬), sought to register the marks “POWERED BY JUJU”and “JUJU JOINTS”for vaporizing devices for cannabis or marijuana. However, the Examining Attorney for each application noted that, under Sections 1 and 45 of the Trademark Act, there must be lawful use, or intended use, of a mark in commerce before said mark can be federally registered. As there can be no use of a mark in lawful commerce when the goods or services for which the mark is used, or is intended to be used, are unlawful, Applicant’s marks for cannabis vaporizing devices-which are illegal as drug paraphernalia under the federal Controlled Substances Act (“CSA‚¬)-were denied federal registration.

On appeal to the TTAB, the Applicant cited the Department of Justice’s explicit decision, as spelled out in its 2013 “Cole Memo,”not to prosecute marijuana businesses in jurisdictions where marijuana has been legalized as a basis under which such goods should be considered lawful. The Applicant argued that, because the jurisdictions in which it does business “comply with federal directives such as the Cole Memo,”its goods should thus be considered lawful for purposes of federal trademark registration.

The TTAB, however, rejected the Applicant’s argument, indicating that federal directives such as the Cole Memo do not override federal laws in determining lawfulness. The TTAB stressed that the Cole Memo merely laid out enforcement priorities to guide enforcement of the CSA as it related to marijuana and in no way served to alter federal illegality of marijuana or marijuana-related goods or services. The TTAB stated, “lawful use of a mark in commerce is a prerequisite to federal registration . . . and . . . Congress has made sale of marijuana paraphernalia illegal under federal law.‚¬

This ruling is consistent with the TTAB’s In re Brown decision from earlier in the year, wherein the TTAB affirmed the refusal to grant federal registration to a mark used for the retail sale of herbs that included marijuana on the basis of lacking lawful use.

The TTAB has thus made it clear that, because of the drug’s federal illegality, marijuana businesses operating legally at the state level will be largely unable to secure federal trademark registrations.

The full opinion can be found here.