Marijuana Vaporizers Are (Still) Illegal Under CSA: TTAB Affirms Two “JUJU” Refusals

[This guest post was written by Kira-Khanh McCarthy, a rising-3L at University of Notre Dame Law School.] The Board affirmed refusals to register JUJU RX and JUJU HYBRID for smokeless marijuana vaporizers, under Sections 1 and 45 of the Trademark Act. Applicant, Canopy Growth Corporation, received an assignment of the entire interest and goodwill in the applications from JJ206 LLC, and this opinion closely resembles that of a prior precedential decision for similar marks on identical goods. In re JJ206, LLC, 120 USPQ2d 1568 (TTAB 2016) [TTABlogged here]. “Applicant’s arguments in these cases mirror the unsuccessful arguments its predecessor made in the appeals of other applications identifying essentially the same goods, for which [the Board] affirmed unlawfulness refusals.” Here, the Board held that the identified goods are illegal under the federal Controlled Substances Act (CSA) and therefore any use of the marks in commerce would be unlawful. In re Canopy Growth Corporation by assignment from JJ206, LLC, Serial Nos. 86475885 & 86475899 (July 16, 2019) [not precedential] (Opinion by Judge Cynthia C. Lynch).

As in JJ206, in an intent-to-use application, “where the identified goods are illegal under the [CSA], the applicant cannot use its mark in lawful commerce, and ‘it is a legal impossibility’ for the applicant to have the requisite bona fide intent to use the mark.” 120 USPQ2d at 1569 (quoting John W. Carson Found. V. Toilets.com, Inc., 94 USPQ2d 1942 (TTAB 2010)). Under the CSA, it is unlawful to sell, offer for sale, or transport in interstate commerce drug paraphernalia, defined as “any equipment . . . primarily intended or designed for use in . . . ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].” 21 U.S.C. § 863.

According to the CSA, marijuana is defined as “all parts of the plant Cannabis sativa L. . . .” and it is a “controlled substance that is unlawful to possess.” Examining Attorney Robert J. Struck and the Board agreed that Applicant’s mention of “cannabis” in the identification of its goods refers to marijuana. Consequently, the identified goods fall within the definition of illegal drug paraphernalia under the CSA.

Applicant made four assertions. First, similar to JJ206, Applicant “relie[d] on state marijuana laws to claim that its intended use is lawful.” The Board again rejected this argument: “[T]he federal CSA is conclusive on the lawfulness issue for purposes of obtaining a federal trademark registration.” JJ206, 120 USPQ2d at 1571; In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016). Second, Canopy Growth also tried to draw parallels between its product and “other oral vaporizing apparatuses, like e-cigarettes,” but the Board found the comparison unsound because the identified goods are in violation of the CSA while devices such as e-cigarettes are not. Third, Applicant contended “that because the jurisdictions where it does business ‘comply with federal directives such as the Cole Memo,’ its goods should be considered lawful.” But, similar to JJ206, the Board found that the Cole Memo“does not and cannot override the CSA.,” The Board further took judicial notice that the Cole Memo was rescinded on January 4, 2018, “mooting any of Applicant’s arguments based on [its] enforcement prioritization.” Lastly, Canopy Growth restated policy arguments from JJ206, which the Board again rejected because they “fail[ed] to recognize that lawful use of a mark in commerce is a prerequisite to federal registration.”

And so, dismissing all of Applicant’s arguments, the Board found that, because the identified goods constitute illegal drug paraphernalia under the CSA, intended use of the applied-for marks is unlawful and cannot provide a basis for federal registration. The refusals to register were therefore affirmed.