CareersThe U.S. Trademark Trial and Appeal Board (“TTAB”), in the case of In re National Concessions Group, Inc., TTAB Ex Parte Appeal No. 87168058, on May 3, 2023, affirmed the refusal to register two applications because the identified goods, i.e., “essential oil dispensers, sold empty, for domestic use,” in both applications, were found to be prohibited drug paraphernalia, under the Controlled Substances Act (“CSA”). As a result, the applied-for trademarks are not eligible for registration with the U.S. Patent and Trademark Office (“USPTO”).
Under trademark law, a valid trademark registration requires “lawful use in commerce.” The CSA identifies “Marihuana” as a controlled substance that is unlawful to possess. 21 U.S. Code § 812. Section 863(a) of the CSA makes it unlawful for any person to (1) sell or offer for sale drug paraphernalia; (2) use the mails or any other facility of interstate commerce to transport drug paraphernalia; or (3) import or export drug paraphernalia. Further, under Section 863(d) of the CSA, any equipment, or the like, 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. In short, even though essential oil dispensers, sold empty, can be asserted to be an item traditionally used for tobacco-based substances, the TTAB found enough extrinsic evidence to determine that an essential oil dispenser, as a “dabbing” tool, is prohibited drug paraphernalia under the CSA.
This precedential opinion, in turn, creates consequential ramifications going forward for those seeking federal trademark protection for marks involving cannabis-related goods. Up to this point, the USPTO has primarily focused on prohibiting marks which are actually associated with the cannabis plant. And, although there have been occasions in the past where federal trademark applications involving cannabis-related goods, not identifying cannabis, successfully obtained registration. A greater likelihood now exists that the USPTO will more closely examine any application involving cannabis-related goods, for a plausible connection to cannabis, even though some of these cannabis-related goods have been traditionally used for tobacco-based substances.
This newly bolstered USPTO trademark application examination policy for marks involving cannabis-related goods amplifies a need to seek meaningful guidance from an experienced trademark attorney in order to develop a strategy when preparing to file a trademark application. Walter Haverfield’s attorneys regularly counsel clients in such matters.
Kevin Soucek is an attorney with the Walter Haverfield Business Services Group, focusing his work on transactional matters, tax matters, and trademark law. He can be reached at 216.619.7885 or ksoucek@walterhav.com.