Micheline Johnson

Micheline Johnson is co-chair of Baker Donelson’s Trademark and Branding Group. She is a registered patent and trademark attorney and concentrates her practice in intellectual property. Contact her at mjohnson@bakerdonelson.com.

The U.S. Supreme Court recently struck down as unconstitutional the ban on disparaging trademark registrations, but that doesn’t mean a dispensary can get a federal trademark registration.

The Supreme Court’s June 19 decision in the “Slants” case1 undoubtedly makes the other previously prohibited categories of marks registrable – those that are deemed scandalous or immoral. Accordingly, red-light sector businesses, or brands seeking to capitalize on the shock value of a racy or potentially offensive name, should slink through the USPTO now. The PTO itself has said that, if the disparagement clause is an unconstitutional restriction on free speech, then the ban on immoral or scandalous registrations is unconstitutional as well.

However, trademarks used exclusively on illegal (under federal law) goods or services are still blocked from federal registration.  Accordingly, the TTAB on June 16 affirmed the rejection of PharmaCann LLC’s applications for “Pharmacann” and “Pharmacannis” for retail services relating to medical marijuana2. Goods or services related to marijuana are not intended for use in legal commerce and thus may not be registered, despite the fact that 29 states, the District of Columbia and two U.S. territories have legalized marijuana and cannabis for medical use, according to the National Conference of State Legislatures.

The majority of the impact of the Slants decision will likely be in the creative industries, where elements of the music, art, fashion and the like have always sought to shock. The cannabis industry, evolving as it is from criminality, is more than a bit scandalous. However, cannabis commerce will need more than action from the Supreme Court in order to protect its intellectual property. It will need action from Congress to legalize marijuana at the federal level. Decriminalization of the drug is unlikely to happen soon, given both the legislature’s reluctance to address this issue, and its difficulty in working together generally.

At present, Congress has refused to provide funding to enforce federal marijuana prohibitions in states with medical marijuana laws. However, the Trademark Trial and Appeal Board ruled June 162 that a lack of enforcement funds doesn’t mean a law is repealed. The TTAB said that should Congress change its view and appropriate enforcement funds next year, individuals who sold medical marijuana during the funding freeze could be prosecuted.

1 Matal v. Tam, Lee v. Tam, U.S.S.Ct., No. 15-1293, 6/19/17

2 In re PharmaCann LLC, TTAB, No. 86520135, 6/16/17

Trademark owners applying for “intent to use” applications risk loss of trademark rights if the identification of goods services in the intent to use application is broader than the actual intended use of the mark.

Brand owners generally want to protect a potential trademark as broadly as possible. Often, this leads to specifying as many goods or services in their intent-to-use trademark applications as might possibly be covered by the planned mark. If no proof of bona fide intent can be marshaled, the registration is vulnerable to attack.

A recent case demonstrates that dreaming big in trademark applications is not to be encouraged. While Kelly Services v. Creative Harbor did not result in a punitive cancelation of the mark’s resulting registration, it nonetheless made it clear that goods and services with only potential plans for use with a mark will be cut out of the registration when challenged. See Kelly Services, Inc. v. Creative Harbor, LLC, No. 16-1200 (6th Cir. 2017).

Section 1(b) of the Lanham Act does not define “bona fide intent,” but the Federal Circuit in Kelly Services required that “the applicant’s intent must be demonstrable and more than a mere subjective belief.” That is, the applicant must show more than a mere intention to reserve a right in the mark. Particularly suspicious circumstances that cast doubt on the bona fides of the application include: (1) excessive numbers of intent-to-use applications in relation to the number of products the applicant is likely to introduce; (2) unreasonably vague descriptions of the proposed goods; (3) excessive numbers of intended products; and (4) excessive numbers of desirable trademarks intended for use on a single new product.

To demonstrate the presence of their bona fide intent to use a mark, however, brand owners can do a number of things. For example, the owner can: (1) conduct a trademark availability search on the mark; (2) develop marketing materials for the brand; or (3) produce correspondence or documents mentioning the planned use of the mark, the licensing of the brand, the regulatory approval of the branded line or the business development of the brand.

Such evidence shifts the burden of proof back to the challenger, who must then produce a preponderance of evidence to the contrary – a much more difficult task in light of demonstrated bona fide intent.

PRO TIP: Before filing a statement of use, compare the identification of goods and services in the trademark application to the goods and services currently offered under the brand, then tailor the identification to the goods and services in use under the mark.