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.… Keep reading