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Cannabis Trademark Opposition: A Fanciful Counterfactual Illustration

By John DiGiacomo

Parties file oppositions against pending trademark applications for a wide variety of reasons. Often, a party filing an opposition or requesting an extension of time to do so will contact the Applicant before filing or at the same time.  Whether an opposition is expected or not, there are often win-win scenarios that savvy parties can reach quickly and efficiently.  In simple terms, a trademark opposition is an administrative proceeding whereby any party that believes it will be injured by the registration of a pending trademark application may attempt to prevent it from registering. The proceeding is filed with and handled by the Trademark Trial and Appeal Board (“TTAB”).

Applying for a federal trademark can be accomplished online, but an experienced trademark attorney should see potential conflicts before they are created and provide you with an analysis that may let you sidestep such conflicts to the satisfaction of your risk tolerance. An experienced trademark attorney will also help you craft an application that fully protects your key rights and accomplishes your practical goals. For example, if you do not believe you will be able to make it to market with your goods for more than a year, a good trademark attorney can extend the application process to avoid extension fees and save you money.  

A good trademark attorney will also tell you what to expect procedurally and keep you updated as he or she shepherds your application through to registration.  Once your application has been approved by the Examining Attorney at the Trademark Office, it is published in the Official Gazette, which is a list of all recently approved trademark applications read exclusively by automata and trademark attorneys.  If a third party, or more likely that party’s trademark attorney, believes that it will be injured if your application matures to registration, it may file a Notice of Opposition during the thirty (30) day publication period.  An Opposition is an adversarial proceeding, but both the Applicant and the Opposer frequently have good options as long as they have skilled trademark attorneys looking out for them. See TBMP § 309.03(c).

Cannabis Trademark Opposition: A Fanciful Counterfactual Illustration

One of the many grounds for denying trademark registration or opposing a published application hinges on whether your identified goods and/or services are legal.  One interesting example about which there is considerable disagreement is the identification of goods containing naturally derived CBD.  Although it seems clear that goods comprising CBD do not run afoul of the Controlled Substances Act, some believe that they do conflict with the FDA’s regulation of dietary supplements.

For a more cut and dry hypothetical let us assume that the Jeff Sessions forgot to tell the Trademark Office that distribution and recreational use of marijuana is not legal in his United States. Let us say the Trademark Office staff is dazed and confused. Legal marijuana sales in North America are expected to top $20.2 billion by 2021.  More than half of the states have decriminalized some form of possession and/or use of marijuana.  Eight states and the District of Columbia (excluding federal property) allow recreational marijuana use and another 21 states allow medicinal use.

So, continuing our hypothetical, let us say you run a thriving cannabis farm in Oregon.  You want to register a trademark involving the word “hi” in white letters inside an orange circle. (This part of the story is true.)  You enjoy your trademark because you like double entendres. So do your consumers who develop a fierce brand loyalty.  You also offer a cannabis-based balm that provides pain relief under the mark RE-LEAF.

Even if the Trademark Office approves a federal trademark application for HI identifying the actual goods and services your provide, you may find that a neighbor of Jeff Sessions has been waiting for the publication of your application so that he may file a Notice of Opposition and attempt to block it from registering.

Shockingly, this neighbor owns a large cigarette company and claims that the sale of marijuana cigarettes will decrease the sale of tobacco cigarettes injuring the neighbor’s company in the process. You are outraged but calm and call your trusted team of trademark attorneys.  They move quickly to respond to the Notice.

In the following weeks, you and the Opposer might attempt to work out a settlement agreement solidifying the rights of both parties, file motions, and engage in discovery.  If both sides refuse to compromise, depositions may be taken, sworn statements may be prepared, documents will be accumulated and expert opinions may be solicited.  During this time, both sides are building the towers of paper needed to make their cases.  For the most part, proceedings before the TTAB are conducted through paper filings without oral argument.

In our counterfactual, all the evidence from the tobacco company boils down to: “Hey, marijuana drug use is illegal.” You and your lawyers do your best, but, in the end, the TTAB says: “Wow, marijuana is illegal at the federal level. Who knew!?!” The TTAB then rules in favor of the Opposer and denies your application for trademark registration. You are outraged in the morning, but, by late afternoon, you are mellow.

Many Options: Even for a Seemingly Bad Case

In the real world, there are many tactics and strategies available to an experienced trademark attorney even if you have a loser of a case like the one described in our hypothetical above.

First, a skilled trademark attorney will help you craft your initial trademark application to avoid hypotheticals like the one above.  Not only would a trademark attorney advise against filing an application containing obvious flaws, he or she should be able to survey the existing third-party registrations and side step potential conflicts.

Second, under more normal circumstances, a reasonable trademark attorney may be able to negotiate a settlement with the Opposer.  Often, the parties are both happy to reach a “coexistence” agreement.

Third, a trademark attorney may be able to “fix” your application if there is a significant danger that the Opposer will succeed.  Knowing when to concede and what points to concede is an important skill.  One of the most common claims made in a Notice of Opposition is that the opposed application creates a “likelihood of confusion.”  If the only goods identified in your application that the Opposer actually cares about are goods that are not central to your business, it may be in your best interest to delete those goods from your application to pacify the Opposer and reduce any likelihood of consumer confusion.

Finally, a trademark attorney who has been down this path many times can help you decide if it is worth appealing an adverse decision.  Appeals can be made directly to the US Court of Appeals for the Federal Circuit or to your local US District Court.  There are benefits and drawbacks to each avenue of appeal.

Contact Revision Legal.

Registering trademarks is complex and multifaceted. To do it right and to avoid missteps that can lead to opposition proceedings, you need skilled trademark attorneys like those at Revision Legal. We can help you and your business navigate the complexities. Contact us today.

We can be reached by using the form on this page or by calling us at 855-473-8474. We look forward to working with you.

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