Finding Essential Oil Dispensers to be Illegal Drug Paraphernalia, Trademark Trial and Appeal Board (“TTAB”) Affirmed Refusal of Two Federal Trademark Applications
Last month, the TTAB published a precedential opinion affirming the United States Patent and Trademark Office’s (“USPTO”) rejection of two applications for the marks “BAKKED” in standard character form and a corresponding logo. The applications sought registration for an “essential oil dispenser, sold empty, for domestic use,” and were originally filed in 2016.
Despite the absence of any reference to cannabis in the applications, the USPTO refused to register the marks due to alleged violations of the Controlled Substances Act (“CSA”). For further details, refer to the opinion in the case of In re National Concessions Group, Inc. available HERE. This decision underscores the USPTO’s and TTAB’s heightened scrutiny of applications associated with cannabis businesses.
In this case, TTAB was unconvinced by applicant’s attempts to draw parallels between its oil dispenser, and razor blades or postage scales. The TTAB found that, unlike with blades and scales, extensive evidence indicated that applicant’s identified products were primarily intended for use with schedule I drugs. Evidence included applicant’s website and marketing of its “Bakked Dabaratus” all-in-one dabbing tool, advertised for “the perfect dose of cannabis extract.”
The TTAB also rejected applicant’s claim that the application qualified for a CSA exemption, citing the legality of cannabis under state law. The USPTO has consistently maintained that a mark must be in “lawful use” under federal law to qualify for registration. In its examination, the USPTO reviewed the company’s website and social media presence, determining the primary purpose of the products was for use with cannabis.
The USPTO further clarified that, although cannabis may be legal in certain states, federal trademark registration rights extend beyond state borders, and the products would be subject to interstate commerce regulations. The authorization of one state to legalize cannabis “cannot override the laws of the other states or federal law[…]”
Emerge’s intellectual property practice group chair, Sean Clancy, had this to say: “Although this decision is precedential, it mostly reiterates the same dated policies that USPTO has been following for years in this arena, similar to the ULTRA TRIMMER case. Brand owners can only get federal registration for federally lawful goods and services. How they do that is heavily fact-dependent, and achievable with the right strategy but not easy. If National Concessions Group’s marketing had not focused on cannabis, perhaps they might have enjoyed a different outcome.” Indeed, in a footnote, TTAB noted that, “nothing in the record supports a finding
that Applicant uses its marks on anything other than an apparatus used to dispense
cannabis-based oils for vaping […]”
“As with everything else, cannabis businesses must exercise extra diligence and caution in developing and safeguarding their brands,” remarks trademark attorney Delia Rojas. Under the shadow of federal prohibition, brand protection remains challenging for cannabis businesses. Careful trademark strategies should be evaluated on a case-by-case basis for each business.
