TTAB Snuffs Out Two (Non-)Marijuana TM Applications
The Board affirmed Section 2(e)(1) refusals to register PARIS OG KUSH INDICA and HARDCORE OG KUSH INDICA, finding the marks to be deceptively misdescriptive of "medicinal herbs." Applicant stated that his goods "are not marijuana" and "are not derivative of marijuana in any way." However, PARIS OG, OG KUSH, HARDCORE OG, and INDICA are all descriptive of strains of marijuana. In re Sharnazyan, Serial Nos. 86267290 and 86332806 (August 30, 2016) [not precedential].
A mark is deceptively misdescriptive under Section 2(e)(1) if it misdescribes the goods and if a reasonably prudent consumer would believe the misrepresentation. Applicant did not dispute that the terms listed above refer to strains of marijuana, nor that marijuana is legally available in a number of states.
In response to Examining Attorney Robert J. Struck's request for information, Applicant stated that his goods are not marijuana, "do not fall within the CSA definition of marijuana," and are not derived from marijuana.
The Board found it plausible that medicinal herbs could contain marijuana, since medical marijuana exists in the marketplace, and that PARIS OG, OG KUSH, HARDCORE OG, and INDICA describe strains of marijuana likely found in medical marijuana. The applied-for marks therefore misdescribe "medicinal herbs."
Applicant asserted that his product will be labeled with the statement - "Not Marijuana" - which would dispel "any potential plausible inference that the product contains marijuana." The Board was not moved because it must consider the marks applicant seeks to register as set forth in the applications. "[T]he mark standing alone must pass muster, for that is what the applicant seeks to register, not extraneous explanatory statements."
The evidence showed that medical marijuana is available in 23 states and the District of Columbia. The Examining Attorney contended that consumers are likely to believe the misrepresentation that applicant's goods contain marijuana because such goods are available in some areas. He pointed out that the subject applications are not limited to any geographic region or channels of trade, and therefore it is presumed that the goods could be offered where marijuana possession is considered legal.
Applicant argued that consumers are unlikely to believe that the goods contain marijuana because consumers are aware that sale of marijuana is illegal under federal law. His marks will merely bring to mind, after a multistage reasoning process and the exercise of imagination, memories of a "marijuana high" and the "feelings of euphoria and the philosophical thinking commonly associated with marijuana usage already existent in the consumers' mind." The Board was not persuaded, finding it far more likely that consumers would expect applicant's "medicinal herbs" to contain strains of marijuana sold in medical marijuana dispensaries across the country.
And so the Board affirmed the Section 2(e)(1) refusal.
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TTABlog comment: How could an applicant limit the applications to a specific geographical region? One cannot file a geographically-restricted application except via the concurrent use route, and this is not a concurrent use situation.
Text Copyright John L. Welch 2016.