Trademark Board Confirms That Applications Must Assert Lawful Basis at Time of Filing Application

Brooke Penrose and Deb Peckham

In a recent decision, the Trademark Trial and Appeal Board (TTAB or Board) considered whether an application based upon an “intent to use” a mark in commerce may be predicated on proposed use with currently unlawful goods that may become lawful in the future.

In In re Joy Tea Inc., the applicant proposed to use its mark with, among other items, “tea-based beverages also containing CBD.” The Examiner refused to register the mark on the grounds that applicant’s claim of proposed use of a mark “in lawful commerce” was invalid due to not complying with the Food, Drug and Cosmetic Act at the time the application was filed.

On appeal to the Board, the narrow question became: “[D]oes a trademark applicant’s belief that the cannabis goods specified in its trademark application will become federally lawful in the future provide a sufficient basis upon which to predicate its claimed ‘intent to use’ the mark in lawful U.S. commerce?”

The TTAB’s answer was “no.”

The TTAB upheld the Examiner’s refusal to register the applicant’s mark based on the longstanding prohibition against attempting to reserve a right in a mark, rather than having the ability to use the mark in commerce.

While a trademark application can be filed based on the applicant’s intent to use a mark in the ordinary course of trade rather than current use, it requires the claimed goods and services be lawful at the time of filing. The Board reasoned that it is “not possible to have a bona fide intent to use a mark on goods which are unlawful at the time of the application” and the Trademark Office should continue to refuse registration for applications claiming goods and services that are currently federal unlawful, even if the applicant believes the law may change, because permitting such applications “would result in the mere reservation of a right in the mark until such time, if ever, at which the currently unlawful goods become lawful.”

In upholding the refusal to register, the TTAB clarified that as a federal agency, it only has authority to issue trademark registrations for goods and services that are currently lawful at the federal level. Importantly, the Trademark Office does not have authority to prevent any party to use a particular mark or require that an applicant cover all goods and services it may provide.

As such, cannabusinesses are well-served to carefully develop their intellectual property portfolio protection strategies to maximize registration options while recognizing the limits of federal trademark registration.

The In Re Joy Tea case currently is on appeal to the Federal Circuit. Follow Burns & Levinson on LinkedIn for further developments.