Yes... The USPTO Still Finds Cannabis Goods Federally Unlawful

In re JJ206, LLC, d/b/a JuJu Joints

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By: Nicole A. Syzdek

In an utterly unsurprising opinion issued on October 27, 2016, the Trademark Trial and Appeal Board of the United States Patent & Trademark Office, once again affirmed that marijuana paraphernalia is illegal under the Controlled Substances Act (CSA), and trademark registration will be refused if there is evidence showing the applicant did not possess a bona fide intent to lawfully use the mark in commerce.

In the present case, Applicant, JJ206, LLC d/b/a JuJu Joints, filed federal applications to register the marks POWERED BY JUJU and JUJU JOINTS for use in connection with “smokeless marijuana or cannabis vaporizer apparatus, namely, oral vaporizers for smokers; vaporizing marijuana or cannabis delivery device, namely, oral vaporizers for smoking purposes” in International Class 34.

Applicant explicitly identified the goods in its application as vaporizing devices for cannabis or marijuana, which makes it crystal clear that Applicant’s devices are designed and intended for use with federal illegal substances. Because the identified goods are illegal under the CSA, the Board determined that it was “a legal impossibility” for Applicant to possess the required bona fide intent to lawfully use the mark in commerce in connection with the applied for goods.

In its defense, Applicant asserted the following arguments:

  • Applicant’s goods should be considered in the same league as other oral vaporizing apparatuses, like e-cigarettes;
  • Other existing trademark registrations cover goods and services that support the marijuana industry and Applicant’s goods should be treated no differently;
  • Applicant’s goods are marketed and sold in states where marijuana is legal; and
  • Denying trademark protection for marijuana-related goods allows for dilution of brand and quality that is contrary to the intent of the Trademark Act.

The Board did not find any of these arguments persuasive.

First, the Board disagreed that Applicant’s goods should be considered like other e-cigarettes because Applicant’s goods identification and Applicant's own evidence make clear that its devices are in a different “league” of products that violate the CSA.

Second, the Board highlighted important distinctions in the cited trademark registrations, namely, that none of them present similar issues of unlawfulness—i.e., they don’t identify goods or services that “touch the cannabis plant.”

Third, the Board quoted its prior decision in In re Morgan Brown, stating “the fact that the provision of a product or service may be lawful within a state is irrelevant to the question of federal registration when it is unlawful under federal law.”

Finally, the Board swiftly dismissed Applicant’s policy argument pertaining to the intent of the Trademark Act as being beyond its jurisdiction over issues of trademark registrability.

Ultimately this decision reaffirms three things we learned from In re Morgan Brown:

(1)  Cannabis is still illegal under federal law;

(2)  The USPTO will not issue federal registration for goods or services that “touch the cannabis plant;” and

(3)  The USPTO does not care whether the goods or services are sold in states where medical or recreational cannabis is legal.