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TTAB Nixes Toke Without Smoke

Scott J. Slavick

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Not often does the Trademark Trial and Appeal Board consider whether a drug is a drug. But that’s what happened when the Board reviewed the mark THCTea—finding it misdescriptive. After reviewing the applicant’s argument for the mark, one might wonder if he was taking a toke of THC himself!

The test for deceptive misdescriptiveness has two parts. First, the mark must misdescribe the goods or services. Second, consumers must believe the misdescription. This stands in stark contrast to a deceptiveness refusal, where the misdescription need not be material to the purchaser’s purchasing decision.

In a precedential ruling in September in In re Christopher C. Hinton, Serial No. 85/713,080, the Board affirmed a refusal to register the mark THCTea, in standard character form, for "tea-based beverages." The Board deemed the mark deceptively misdescriptive of the applicant's goods.

The Board found that tea-based beverages could contain tetrahydrocannabinol (THC), the chief ingredient in marijuana. It found that THCTea is merely descriptive of tea-based beverages that contain THC. And it further found that the applicant's goods did not contain THC, with the applicant even admitting during the trial that his goods did not contain it. Lastly, the Board held that consumers were likely to believe the misrepresentation made by the mark.

To the Board, the evidence presented clearly established that the term THC means either of two physiologically active isomers from hemp plant resin, especially tetrahydrocannabinol, the chief ingredient in marijuana. The Board held that the USPTO’s examiner had successfully introduced ample evidence to demonstrate that it would be easy for tea-based beverages to contain THC, including online chatrooms full of recipes for making such tea. The applicant admitted that the examiner’s evidence established the significance of the acronym THC and, more pointedly, that some individuals do commonly refer to tea made from marijuana as THC tea.

The next question was whether reasonably prudent consumers were likely to believe the misrepresentation that the applicant’s beverages contain THC. The applicant argued that THC was intended to stand for Tea Honey Care or "the Honey Care Tea," as shown in two of the applicant’s advertisements.

But the Board rejected the applicant's argument, explaining that it must consider the mark as applied for, and it cannot assume that the mark will be accompanied by additional wordings such as Tea Honey Care. Making matters worse, the applicant’s own specimen of use displayed the mark without any accompanying wording, and he provided no corroborating evidence to show that consumers would interpret THC in the manner the applicant contended.

The applicant then went on to argue that consumers would know that marijuana is illegal under federal law, and that even in states having medicinal marijuana laws, the use of marijuana is still highly regulated. The applicant asserted that only an uninformed, gullible consumer would believe that a bottle of THCTea available in a grocery store would contain an illegal substance.

The Board disagreed. It explained that marijuana possession is considered legal in certain circumstances, under the laws of nearly half the states. Furthermore, there was some evidence in the record to support the conclusion that teas containing THC are commercially available for medicinal use. Finally, the Board explained that nothing in the objected-to application restricts sales of the applicant’s products to states where marijuana is illegal, nor did the application indicate that the applicant's goods will not be offered through marijuana dispensaries. Thus, the Board affirmed the refusal.

After seeing the applicant's claims go up in smoke, I wonder if he could have successfully registered a different but related mark, instead: for example, THC Tea Honey Care? I'm still not convinced that the Board wouldn’t find the initial THC Tea deceptively misdescriptive, regardless of the last three words in the mark. But that invites a second speculation: if a product were marketed as Tea Honey Care, which presumably would pass a mere descriptiveness challenge because of the word Care, could it further win for THC Tea at a later time, pointing to prior use of Tea Honey Care?

Second, in its decision, the Board noted that whether or not the applicant's products feature the intoxicant THC would be highly relevant to a consumer's purchasing decision. But at the same time, the Board pointed out that the issue of deceptiveness was not before it. Does this mean that the Board thought that the examiner should have raised deceptiveness as an alternate ground for rejection? What difference would that have made in the Board’s holding?

In the end, a deceptive mark is unregistrable no matter what, whereas a mark that is only deceptively misdescriptive is still eligible for registration under proof of acquired distinctiveness. It begs the question of what would happen if the applicant filed a new application claiming acquired distinctiveness? Perhaps the Board would still find a way to either reject the acquired distinctiveness evidence, but perhaps it would not.

Could we see THCTEA®? Maybe some day. But I wouldn’t consider the likelihood to be high.


Reprinted with permission from the December 31, 2015 edition of Inside Counsel© 2015 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited, contact 877-257-3382 or reprints@alm.com.

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