TTAB Dismisses REEFER MAN Opposition Due to Unlawfulness of Opposer's Pleaded Applications

Allright Mind Enterprises opposed an application to register REEFER MAN for smoker's article and educational services, claiming likelihood of confusion with the mark REEFERMAN GENETICS for plant nutrients, seeds, and related retail services, none of the foregoing involving Cannabis sativa L. Allright relied on its two pending intent-to-use applications for (contingent) priority. However, the Board found that Allright lacked a bona fide intent to use its mark because the goods and services it identified are illegal and its pleaded applications are invalid, and so it dismissed the opposition. Allright Mind Enterprises Ltd. v. Creative Arts By Calloway, LLC, Opposition No. 91273573 (August 1, 2024) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Applicant Creative Arts by Calloway [related to Cab Calloway -ed.?] asserted that Allright lacked standing because of the invalidity of its allegations, but the Board disagreed. Allbright has been selling goods under its mark via a website that U.S. consumers may access and it filed its first application 11 years ago. "This shows that Opposer has a legitimate commercial interest in the mark at issue" and is not a mere intermeddler.

The Board noted that Allright did not allege prior use of its mark in the United States, nor ownership of a U.S. registration. However, it may rely on the filing date of its intent-to-use application to establish priority under the constructive use provisions of Section 7(c) of the Trademark Act.

But where, as here, a plaintiff relies on applications to provide constructive priority in a Section 2(d) claim, a defendant may assert defenses alleging the invalidity of the plaintiff’s asserted applications. See Salacuse v. Ginger Spirits, Inc., Canc. No. 92024813, 1997 WL 687374, at *3 (TTAB 1997).

Here, Creative Arts asserted that Allright lacked a bona fide intent to use its mark because its only use of the mark had been in Canada and only in connection with goods that are unlawful under the Controlled Substances Act (CSA). Allright provided no evidence or testimony regarding no documentary evidence or testimony that it "has ever intended to use its mark for any non-cannabis plants." Indeed, Allright did not even contest these assertions.

Likewise, as for wholesale and retail services, there was is no evidence that Allright ever "provided sales services concerning anything other than cannabis and cannabis-related products that have been, and are currently still, unlawful under the CSA."

We find the evidence in this case, however, indicates only Opposer’s intent to reserve rights in its mark, so that it would remain at the front of the line to register if the U.S.  government ever changes the CSA to permit sales of cannabis and other products that currently are unlawful under the CSA but which, as far as we can tell on this evidentiary record, appear to be the only products Opposer sells.

The Board therefore deemed Allright's pleaded applications invalid, leaving Allright with no proof of priority. Without priority, Allright cannot prove its Section 2(d) claim, and so the Board dismissed the opposition.

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Text Copyright John L. Welch 2024.