In a precedential decision, the Trademark Trial and Appeal Board (“TTAB”) affirmed an examining attorney’s refusal to register two “Bakked” trademarks by deeming the goods to be illegal drug paraphernalia under the Controlled Substances Act (the “CSA”) and deciding the two exemptions of the CSA did not apply.
The Bakked trademark applications
National Concessions Group (“NCG”), a Colorado-based subsidiary of Canadian company SLANG Worldwide, filed two trademark applications to protect its brand name “Bakked” in connection with a product identified as “an essential oil dispenser, sold empty, for domestic use.” The examining attorney took the position that the product constituted illegal drug paraphernalia because it was primarily used for “dabbing” cannabis-based oils, and it denied the applications. Appeals ensued, and the refusals remained in effect until it escalated to the TTAB. Unfortunately for NCG, the TTAB agreed.
The TTAB decision
First, the decision (which is marked “This Opinion is a Precedent of the TTAB”) analyzes whether the product should be considered drug paraphernalia under the CSA:
“equipment or products primarily intended or designed for use in ingesting, inhaling, or otherwise introducing marijuana into the human body (e.g., water pipes, roach clips and bongs) constitute unlawful drug paraphernalia under Section 863(d) of the CSA, but for two exemptions set out in Section 863(f).”
Here, the TTAB cited several extrinsic pieces of evidence to show that the oil dispenser should be considered drug paraphernalia. This included a press release by National Concessions, which advertised itself as “The Largest Cannabis Company in the US” as well as news articles describing “dabbing” as a new way to get high – which is what the oil dispenser was primarily linked to.
Having decided the dispenser did constitute drug paraphernalia, the decision then examines whether it fell under an exemption of the CSA. Section 863(f)(1) of the CSA exempts “any person authorized by local, State, or Federal law to manufacture, possess, or distribute such items.” Here, NCG argued that because it is authorized by Colorado state law to produce such a product, it should qualify for the exemption. The TTAB disagreed that Colorado state law should have any bearing on federal trademark registration and protection:
“[A]ny authorization by Colorado of Applicant’s manufacture, possession or distribution of the goods cannot override the laws of the other states or federal law outside Colorado. … While Applicant may be correct that Colorado has authorized it to manufacture, possess or distribute the goods, such authorization does not extend beyond the borders of Colorado. … But that exemption is insufficient to support the federal trademark registration Applicant seeks, which would be nationwide in effect. We hold that when a Section 863(f)(1) exemption is applicable based on state law, that exemption does not support federal registration.”
The TTAB similarly found that NCG did not qualify for the second exemption either. Section 863(f)(2) of the CSA exempts “any item that, in the normal lawful course of business is imported, exported, transported, or sold through the mail or by any other means, and traditionally intended for use with tobacco products, including any pipe, paper, or accessory.” Here however, NCG just fell short of convincing the TTAB its product was traditionally intended for use with tobacco products.
While the Opinion is certainly in keeping with the lack of USPTO protection for the industry, it’s notable in that it unabashedly declares marijuana’s legality in any one state has no bearing on whether federal registration and protection should be granted. It’s disappointing for those in the industry who want to (rightfully) protect their brand, but it looks like that’s how it’s going to be for the foreseeable future.
We’ve also written about other TTAB decisions and its general process here:
PUREXXXCBD Can’t Be Trademarked
Cannabis Trademarks: Understanding the Opposition Process
The Anatomy of a Cannabis Trademark TTAB Decision
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