United States: TTAB Affirms Denial of Illegal Use of ITU Request for “FOR JOY” for CBD-Containing Tea
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Commission upheld USPTO’s refusal to register proposed trademark FOR JOY for, among others, tea-based beverages containing CBD, on the grounds that the products in themselves constitute a violation of the Food, Drug and Cosmetic Act (DCA), and therefore the applicant does not intend to good faith required to legally use the mark in commerce under Sections 1 and 45. The applicant argued that he “has a“ good faith intention to show legal use… in commerce in the future because ” it reasonably foresees that the legal framework will change within a reasonable time ”. Not good enough, the Council said.
In re Joy Tea Inc., Serial number 88640009 (September 1, 2021) [not precedential] (Opinion of Judge Robert H. Coggins).
As investigative prosecutor Tasneem Hussain pointed out, the FDCA prohibits “any food to which has been added ….” 21 USC § 331 (ll). There was no doubt that the plaintiff’s products included food to which of CBD has been added, that CBD has been the subject of substantial clinical investigations during the prosecution of the relevant claim and that some of the applicant’s products are therefore currently illegal under the FDCA.
The Board viewed the issue under consideration as “narrow and straightforward: Can an applicant for federal trademark registration have a good faith intention to use their mark in commerce on products which are currently prohibited?” under federal law but which may, perhaps, become lawful in the future. “
The Applicant sought to overturn, or at least restrict, the Board’s decision in JJ206 that there can be no good faith intention to use the mark in lawful commerce if the goods are illicit. [TTABlogged here]. “She argued that she has a” subjective intention to use her mark in future legal trade “because it” anticipates[es] a beneficial change in the law within a reasonable period of time.
The Commission, however, ruled that it is “not possible to have the good faith intention to use a mark on products which are illegal at the time of application”. Otherwise, the result would be “a mere reservation of a right in a trademark until the moment, if any, at which the currently illegal products become lawful”.
And so, the Council confirmed the refusal of registration.
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What if the applicant applied for registration of the mark only for tea, without mention of CBD? He could keep the application alive for three years after the clearance notice, and maybe his CBD-infused tea would be legal by then.
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