The Trademark Trial and Appeal Board (“TTAB” or the “Board”) recently affirmed two refusals to register trademarks:

1) an intent-to-use trademark application for POWERED BY JUJU for “smokeless cannabis vaporizing apparatus, namely, oral vaporizers for smoking purposes; vaporizing cannabis delivery device, namely, oral vaporizers for smoking purposes”, initially refused based on a lack of bona fide intent to use the mark in lawful commerce; and

2) a use-based application for JUJU JOINTS for “smokeless marijuana or cannabis vaporizer apparatus, namely, oral vaporizers for smokers; vaporizing marijuana or cannabis delivery device, namely, oral vaporizers for smoking purposes”, initially refused based on lack of lawful use in U.S. commerce.

In its attempt to register its marks, Applicant argued that the items identified in its goods and services listings are sold in legal commerce because they are sold in states where cannabis is legal.  Applicant also argued that its use complied with federal directives under the “Cole Memo”, and therefore its use should be considered lawful.  Applicant further tried to analogize the marijuana industry and products offered in connection with the consumption of such to the alcohol and tobacco industries.

However, the Board disagreed with each of the above arguments.  First, the Board cited the federal Controlled Substances Act (CSA), which lists cannabis as a Schedule I substance, which is federally illegal to possess or consume, as are items or paraphernalia used to consume the drug.  As such, the Board concluded that it was a “legal impossibility” for the applicant to have the requisite bona fide intent to use POWERED BY JUJU marijuana vaporizers because vaporizers, too, are illegal under the CSA.  The Board used the same line of reasoning to affirm the refusal to register JUJU JOINTS as the goods sold are still illegal under the CSA.

With regard to the “Cole Memo,” the Board dismissed applicant’s argument as the memo simply confirmed the illegality of marijuana as a Schedule I substance under the CSA, despite the enactment of medical marijuana use statutes in certain states.

Finally, the Board highlighted the primary difference between the marijuana industry and the alcohol and  tobacco industries: the former is not a federally legalized industry.

The key takeaway from this precedential decision is that despite the sweep of state laws legalizing both medical and recreational marijuana, there are still limited to no options for federally protecting trademarks used in connection with goods or services related to legal cannabis at this time.  The fact that marijuana business owners cannot secure federal trademark protection may instigate a thrust in state trademark filings for marks in this industry.  However, it is important to note the geographic and other limitations of state registrations, as well as the difference in available remedies by state in the event of infringement.