Thursday, September 01, 2016

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 In re Sharnazyan, Serial Nos. 86267290 and 86332806 (August 30, 2016) [not precedential].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.

Read comments and post your comment here.

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.


At 3:06 PM, Anonymous Anonymous said...

What if the goods were listed as "medicinal herbs not containing marijuana"?

Then the Board could not say it is plausible that they would contain marijuana.

At 5:18 PM, Blogger John L. Welch said...

Don't think that would help. The marks are still deceptively misdescriptive to consumers.

At 8:23 PM, Anonymous Anonymous said...

So, one could not register MOONSHINE for alcoholic beverages containing only legally produced and properly taxed alcohol?

At 9:11 PM, Blogger John L. Welch said...

Is moonshine illegal everywhere? Would people be deceived?

At 1:41 PM, Anonymous Anonymous said...

The USPTO has determined MOONSHINE is descriptive and there are 150+ live marks that include the word.

MOONSHINE means “intoxicating liquor.” Therefore, the wording merely describes the applicant’s goods which are spirits and liquors.

So maybe the Board is applying the rules differently as to marijuana related goods.

I think include the words "not containing marijuana" would help, because the analysis under 2(e)(1) must consider the mark in relation to the goods or services to determine whether a mark is deceptively misdescriptive. I would at least add that wording to try and avoid this refusal.

At 1:57 PM, Blogger John L. Welch said...

I don't see how adding that language to the identification of goods would help. Consumers don't know what's in the PTO application or registration. They see the mark, and think the goods contain marijuana.

What if the i.d. of goods said "sold only in packaging clearly and prominently labeled 'not containing marijuana'?"


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