Back in September Drake, via his Dream Crew company, applied for U.S. federal trademark protection for the warning symbol required on all recreational cannabis products that contain THC by the Health Canada. The symbol resembles a red stop sign with a black cannabis leaf and the letters “THC” prominently displayed:
The application specified the following goods:
- Herbs for medicinal purposes
- Boots; Coats; Dresses; Gloves; Hats; Hoodies; Jackets; Jerseys; Shirts; Shoes; Shorts; Sneakers; Suits; Sweat pants; Sweatshirts; T-shirts; Ties as clothing; Track suits; Trousers; Undergarments; Waist belts
- Raw herbs
- Herbs for smoking
The USPTO examining attorney assigned to this application refused registration on three grounds, all of which are interesting and relevant to would-be cannabis trademark applicants.
First, registration was refused due to likelihood of confusion with an existing trademark registration in Class 25, which covers apparel. This existing trademark registration is for the mark THC. Because the literal element of the applicant’s mark was identical to the registered THC word mark, the examining attorney deemed the marks likely to cause consumer confusion, and denied registration for apparel. This is an illustration of why conducting a trademark clearance search prior to filing your trademark application is a good idea.
Second, the application was denied as to the other three classes of goods specified (herbs) because “applicant did not have a bona fide intent to lawfully use the applied-for mark in commerce as of the filing date of the application.” As we’ve covered before, in order to qualify for federal trademark protection, 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)). Here, the examining attorney did some digging and quickly learned that the applicant was a company owned by Drake, who had recently partnered with a Canadian cannabis company to produce marijuana. The wording of the three classes encompassing herbs was broad enough to include cannabis, which is not lawful under U.S. federal law, and is not eligible for trademark protection.
But this leads us to the third and perhaps most interesting grounds for refusal. which involves the nature of the applied-for mark itself. The logo specified in the application is identical to the symbol mandated under Canadian law to indicate that goods bearing the symbol contain THC. This is a warning symbol intended to alert customers that cannabis products contain more than 10 micrograms of THC per gram. The examining attorney asserted that because “the symbol is intended to be used merely to convey information about the material content of the product,” it serves no source identifying function.
The examining attorney’s assertion is an important foundation of trademark law: In order to be eligible for trademark protection, a mark must actually function as a trademark, meaning that it must actually indicate the source of the specified goods. The examining attorney’s considerations here included (1) the significance of the symbol, (2) the nature of the symbol’s use in the relevant marketplace, and (3) the impression created when the mark is used in connection with the identified goods. Ultimately, the examining attorney declared that:
[b]ecause consumers are accustomed to seeing this symbol used in this manner, when it is applied to applicant’s goods, they would perceive it merely as informational matter indicating that the goods are comprised of THC derived from cannabis or marijuana.
These are all valuable lessons in what can and cannot be eligible for U.S. federal trademark protection, and illustrate the ongoing challenges faced by the cannabis industry in developing strong brands that are eligible for federal protection.