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Can You Register a Mark On Goods You Believe Will Be Lawful in the Future? The TTAB Doesn’t Think So

December 8, 2021 | Cannabis,Intellectual Property

Banking on its final lifeline to overcome registration difficulties, Joy Tea Inc. (“Joy Tea”) took its last shot in getting its proposed “FOR JOY” trademark approved by the Trademark Trial and Appeal Board (“TTAB”). However, the Board affirmed its stance on refusing to register Joy Tea’s proposed mark in connection with its variety of tea-based goods, including tea-based beverages containing CBD, because Joy Tea lacked the requisite bona fide intention to use its FOR JOY trademark in association with legal goods in its application.

Under the Trademark Act, a person may request registration of a mark not used in commerce through an “intent-to-use” (“ITU”) application. Commerce means all commerce that is lawfully regulated by our government. One such requirement under an ITU application is to have a “bona fide” (good faith, genuine, authentic) intention to use a trademark in future sales of goods or services identified in an ITU application.

Joy Tea expressed it had a bona fide intent to sell its tea products in commerce. No problem right? Not quite. Joy Tea intended to sell tea-based beverages containing CBD. CBD (cannabidiol) is a chemical component of the cannabis plant that is regulated under the Federal Food, Drug, and Cosmetic Act (“FDCA”). Consequently, Joy Tea’s goods containing CBD are technically illegal under the FDCA because Joy Tea’s teas are a “food to which has been added . . . a drug or biological product for which substantial clinical investigations have been instituted.”

So how does the unlawful nature of Joy Tea’s goods play into Joy Tea’s application for registration? Joy Tea argued that even though its intended goods are illegal under current law, it believed its goods as applied for today will become lawful in the future. Therefore, Joy Tea argued, a mark for goods that will become lawful in the future should be granted to the applicant. The Board wasn’t convinced, and ruled that it was impossible to have a bona fide intent to use a mark on goods which are unlawful at the time of application.

This means a once hopeful applicant’s application will fail for lack of a bona fide intent if its proposed mark is intended for goods or services that are considered unlawful at the time the application is considered. The Board made clear that deciding otherwise would be in conflict with the Trademark Act’s prohibition against reserving a right in a mark.

In sum, if you’re looking to register a trademark for goods or services you want to sell and market in the marketplace, make sure your goods and/or services are all legal. Otherwise, your ITU application might be dead on arrival at the USPTO.

 

Special thanks to our Law Clerk, Roarke Catubig, for the drafting of this blog post.