Weed Words

Can you register a trademark for a product or service that’s illegal?

Let’s say you have cannabis shops called Giggles in Colorado and Massachusetts and you want to make sure you can open a Giggles in New Hampshire when they legalize.  Or, let’s say you’ve created an amazing new product called Whoa Dude and you want the best protection you can get. Can you do it?

Here’s what the statute says: “No trademark . . .  shall be refused registration . . . unless it . . . [c]onsists of or comprises immoral, deceptive, or scandalous matter . . .”[1]

There are lots of things that are illegal that are neither immoral, deceptive, nor scandalous and anyway the statute prohibits words that are immoral, deceptive, or scandalous. It’s not referring to the products at all.

So you can get a registration if you’re willing to create a public record affirming, under penalty of perjury, that you’re making or selling a product in violation of federal law.[2]

Would anyone do that?

They would.

Among the many applications and registration that include the word “cannabis,”[3] I found only one that flat out says it’s selling a controlled substance: Can-D Rollers LLC of Vancouver, Washington registered THAT TAFFY for: “Dietary and nutritional supplements containing cannabis oil featuring THC or CBD.”

So, the answer is” “Yes. You can get a registration for providing illegal products and services.” But you’re still not going to be able to register Murders R Us without hearing from the giraffe.

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[1] 15 USC Section 1052

[2] When you sign the application you affirm that:

  • The mark is in use in commerce on or in connection with the goods/services in the application; and
  • The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

[3] There are 1173 live applications and registration is that include the word “marijuana” or “cannabis” in the description of goods and services. The majority of them refer only to providing information and education about marijuana, but 90 of them include goods in International Class 005, which includes pharmaceuticals.

Of those 90, most cop out and refer to the product as: “Herbal supplements; Herbal supplements for treating health problems; Natural herbal supplements” or “None of the foregoing comprising or containing marijuana, hemp, cannabis, or derivatives, extracts, or synthetic iterations or marijuana, hemp or cannabis.”

 

But It’s My Name

In the 1980s, Ernest and Julio Gallo got a ruling that prevents their youngest brother from using his own name, JOSEPH GALLO, as a trademark to sell cheese.

In 2016, the estate of Frank Zappa sent a cease and desist letter to Frank’s son, Dweezil Zappa, to make him stop using ZAPPA PLAYS ZAPPA in connection with his band’s tour.

Teresa Earnhardt, the widow of  NASCAR® legend Dale Earnhardt,* has been involved in litigation against her stepson, Kerry Earnhardt, over Kerry’s attempt to register EARNHARDT COLLECTION for home building and furniture since 2012.

What do you do when you can’t even use your own name? How can that even happen?

In general, trademarks that are “primarily surnames” are quite weak and are difficult to register. But, sometimes, a trademark that’s primarily a surname becomes famous and through its fame gains strength and becomes both registrable and defensible.

We’ve seen this before with women named Tiffany wanting to use their name to sell jewelry. The most famous example is probably MCDONALD’S which was no longer owned by brothers Maurice and Richard McDonald.

What can you do if this happens to you? First, I strongly recommend that you have a non-famous name, but if your name happens to be APPLE, I suggest you just use something else as a trademark.

 

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* Teresa Earnhardt is the owner of 8 registered trademarks that include EARNHARDT for a variety of good and services, including key ring, pocket knives, license plate frames, entertainment services relating to racing, toys, decals, clothing, beverage containers, towels, pennants, charitable services, CDs, watches, among other products and services.

Other members of the Earnhardt extended family own other trademarks:

Jeffrey Earnhardt, Kerry’s son, uses JEFFREY EARNHARDT.

Kerry owns a registration for EARNHARDT OUTDOORS for entertainment services relating to outdoor activities.

Son of Hidden Meaning

We’ve already seen the hidden messages in the logos for Cisco®, FedEx®, and Amazon®, but that’s just the tip of the iceberg. Check out these cool messages embedded in logos.

BR 31.pngCan you find the hidden trademark reference in this registered trademark owned by Baskin Robbins Incorporated? I’ll give you a hint. It tells you how many flavors Baskin Robbins® famously offers.

F1.pngDo you see both the F and the 1 in this registered trademark owned by Formula One Licensing B.V. ? The F is in the positive space and the 1 is in the negative space. Vroooom.

Goodwill.png

 

And it’s totally cool how Goodwill Industries International Inc. makes us see the smiling face and the letter G both at the same time.

 

 

Tostitos.png

And just in case you weren’t sure what to do with a tortilla chip, Frito-Lay North America, Inc. shows you how to dip it into salsa right there in their registered trademark.

washington

 

This logo owned and registered by Lincoln Hockey LLC for the Washington Capitals® is pretty damn cool. The eagle is obvious but can you see the Capitol dome in the negative space?

 

 

Have you seen any cool logos with hidden messages lately?

 

 

All trademarks are owned by the companies named and are not affiliated with Beeline Legal in any way.

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