'Marijuana' Brand Trademark Denied (Again)

Last December an entrepreneur from Hawaii filed a trademark for ''Marijuana''. This has not been the first reported attempt to trademark the beloved weed name, and as in past opportunities the U.S. Patents and Trademark office has cut short any expectations from would be ganjapreneurs.

This time, In a very bold move the trade mark was filed, not less, than under this category:

IC 034. US 002 008 009 017. G & S: Herbs for smoking. FIRST USE: 19950420. FIRST USE IN COMMERCE: 19950420

Well,  the USPTO has swiftly cut short the high ambitions of the registrant, and mailed a Refusal Notice, based among other things, on the alleged unlawfulness of use in commerce of the ''specimens''. Here is an excerpt, that cites legal precedent on what probably will be a very important document that asserts federal law preponderance above any other considerations and legislation. Definitely not a good sign of what to expect from federal agencies regarding treatment to cannabis related enterprises.

SECTIONS 1 AND 45 REFUSAL – NOT IN LAWFUL USE IN COMMERCE Registration is refused because the applied-for mark, as used in connection with the goods and/or services identified in the application, is not in lawful use in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127.
 To qualify for federal trademark/service mark registration, the use of a mark in commerce must be lawful.  Gray v. Daffy Dan's Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (stating that "[a] valid application cannot be filed at all for registration of a mark without 'lawful use in commerce'"); TMEP §907; see In re Stellar Int'l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); CreAgri, Inc. v. USANA Health Scis., Inc., 474 F.3d 626, 630, 81 USPQ2d 1592, 1595 (9th Cir. 2007). Thus, any goods or services to which the mark is applied must comply with all applicable federal laws.  See In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993) (noting that "[i]t is settled that the Trademark Act's requirement of '"use in commerce," means a "lawful use in commerce," and [that the sale or] the shipment of goods in violation of [a] federal statute . . . may not be recognized as the basis for establishing trademark rights'" (quoting Clorox Co. v. Armour-Dial, Inc., 214USPQ 850, 851 (TTAB 1982))); In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907.
 The Controlled Substances Act (CSA) prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and marijuana-based preparations.  21 U.S.C. §§812, 841(a)(1), 844(a); see also 21 U.S.C. §802(16) (defining "[marijuana]").  In addition, the CSA makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., "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 the present case, the application identifies applicant's goods as follows: “Herbs for smoking.”
 The specimen of record and the wording contained in the applied-for mark plainly indicate that applicant's identified goods include items and/or activities that are prohibited by the CSA, namely, marijuana and herbs containing marijuana.
 Because these goods and/or services are prohibited by the CSA, the applied-for mark, as used in connection with such goods and/or services, is not in lawful use in commerce.

The full documents and petition are available at the USPTO site.