TTAB Affirms Unlawul Use Refusal of ITU Application for "FOR JOY" for CBD-Containing Tea
The Board upheld the USPTO's refusal to register the proposed mark FOR JOY for, inter alia, tea-based beverages containing CBD, on the ground that the goods are per se violations of the Food, Drug, and Cosmetic Act (FDCA), and therefore applicant lacks the required bona fide intent to lawfully use the mark in commerce under Sections 1 and 45. Applicant argued that it has "a bona fide intent to show legal use . . . in commerce in the future because it reasonably anticipates that the legal framework will change within a reasonable amount of time." Not good enough, said the Board. In re Joy Tea Inc., Serial No. 88640009 (September 1, 2021) [not precedential] (Opinion by Judge Robert H. Coggins ).
As Examining Attorney Tasneem Hussain pointed out, the FDCA prohibits "any food to which has been added . . . a drug or biological product for which substantial clinical investigations have been instituted and for which the existence of such investigations has been made public . . . ." 21 U.S.C. § 331(ll). There was no question that applicant’s goods include food to which CBD has been added, that CBD was the subject of substantial clinical investigations during prosecution of the involved application, and that some of applicant’s goods are therefore currently illegal under the FDCA.
The Board saw the issue at hand as "narrow and simple: whether an applicant for a federal trademark registration can have a bona fide intent to use its mark in commerce on goods that are currently prohibited under federal law but that may, perhaps, become lawful in the future."
Applicant sought to overturn, or at least narrow, the Board's holding in JJ206 that there can be no bona fide intent to use the mark in lawful commerce if the goods are unlawful. [TTABlogged here]. It argued that it has a "subjective intent to use its mark in future legal commerce" because it "anticipat[es] a beneficial change in the law within a reasonable amount of time."
The Board, however, ruled that it is "not possible to have a bona fide intent to use a mark on goods which are unlawful at the time of the application." Otherwise, the result would be "a mere reservation of a right in a mark until such time, if ever, at which the currently unlawful goods become lawful."
And so, the Board affirmed the refusal to register.
Read comments and post your comment here.
TTABlogger comment:
What if applicant applied to register the mark just for tea, with no mention of CBD? It could keep the application alive for three years after the notice of allowance, and maybe its CBD-infused tea would be legal by then. Text Copyright John L. Welch 2021.
posted by John L. Welch @ 9/03/2021
7 comments
7 Comments:
Regarding TTABlogger comment - doesn't bona fide intent have to be as of the application filing date? So if they just said "tea" in the application as filed when they knew they had CBD tea, they would still not have had a bona fide intent on the filing date, right? Or am I missing something?
"What if applicant applied to register the mark just for tea, with no mention of CBD? It could keep the application alive for three years after the notice of allowance, and maybe its CBD-infused tea would be legal by then."
This is the strategy being taken by trademark counsel filing for foods and drinks containing CBD and hemp. The problem with this is that the market is fast and if you want to have some C&D power, your 1b pending mark doesn't do much.
Then if you try to file 1a, the examiners are all over it and will find your CBD/hemp use. The USPTO wasn't up to speed on hemp issues until this year, but has got some specialized examiners now that are highly informed and savvy about these filings.
I definitely would not have appealed this to the TTAB.
I Applicant shows specimens of the product that list CBD as an ingredient, regardless of the description of the goods, the Examiner is likely to make the same rejection. Even if they have two separate lines of products and labels on them shown on their site, the Examiner will make the same assertions. Am I wrong?
"tea" is an appropriate description or CBD-infused tea. Just as "wine" is appropriate even though you sell only red wine, or dessert wine.
It will be interesting to see the appeal to the Federal Circuit play out. They have a great point -- all of the placeholder applications for pharmaceutical companies contain illegal goods per se at the time of filing as well (as they do not have FDA approval at the time of filing). Congress has directed the FDA multiple times to find a regulatory pathway to permit CBD inclusion into certain goods so the hemp industry certainly has a good faith basis to believe the planned goods would be legal at a later date. Why is this industry's future intent of use any different than pharma's?
What if the applicant only produced CBD-infused teas? Then the work-around likely won't work (especially after specimens are shown or websites are investigated by Examiners). Additionally, the pharmaceutical industry routinely applies for multiple ITU-based trademark applications for drugs in their infancy (pre-FDA filing, pre any government approvals). Technically, their use as a drug is still illegal under the FDCA at the time of filing just as Joy Tea's use of FOR JOY with CBD-infused tea was (but likely legal in the near future). The difference is the USPTO gives the pharmaceutical industry a "hall pass" on all of these ITU applications despite their legal standing being exactly the same. In reality, both the pharmaceutical industry applications and Joy Tea's applications are the same and need to be treated the same. So, either the bona fide intent standard for future legal goods/services needs to be allowed across the board or pharma's "hall pass" needs to be taken away. Allowing ITU trademark applications for future legal goods with some standard/rule here makes sense.
At least with pharmaceuticals, there is a legal process in place to get approval.
Pharma companies are not relying on a hoped-for change in the law.
Post a Comment
<< Home