Republic Technologies (NA) LLC (“Republic”) filed an application to register the proposed mark 4:20 with the United States Patent and Trademark Office (“USPTO”).  Republic amended its goods twice during prosecution of the application and ultimately sought to register “tobacco; cigarette papers; cigarette filters; cigarette tubes; cigarette rolling machines; handheld machines for injecting tobacco into cigarette tubes; machines allowing smokers to make cigarettes by themselves; none of the foregoing containing or for use with cannabis” (emphasis added).  The USPTO alleged that consumers would understand 4:20 to mean cannabis, the mark misdescribes non-cannabis related goods, and consumers would believe the misrepresentation.  Therefore, the USPTO refused registration alleging that the mark was deceptively misdescriptive of the goods in the application.  Republic appealed the decision to the Trademark Trial and Appeal Board (the “Board”).  But the Board saw through the smoke of Republic’s arguments and affirmed the refusal. 

            Republic is a leading provider of smoking accessories.  Friends of the blog may recognize Republic’s ZIG-ZAG brand of rolling papers.  Republic initially filed its application for the mark 4:20 for use in association with the goods “tobacco; cigarette papers; cigarette filters; cigarette tubes; cigarette rolling machines; handheld machines for injecting tobacco into cigarette tubes; machines allowing smokers to make cigarettes by themselves.”  Perhaps familiar with the many uses of Republic’s goods, the USPTO refused the application on mere descriptiveness grounds.  It alleged that consumers understand 4:20 to mean cannabis and the goods describe a product containing or to be used with cannabis.  The USPTO also asked Republic to provide additional information about its goods.  In particular, whether the goods contain or would be used in connection with cannabis or marijuana. 

            Because marijuana is illegal under the Controlled Substances Act (“CSA”), trademarks used in connection with such goods cannot be registered with the USPTO.  Sniffing out the possibility of a refusal under the CSA, Republic initially amended its goods to “tobacco; cigarette papers; cigarette filters; cigarette tubes; cigarette rolling machines; handheld machines for injecting tobacco into cigarette tubes; machines allowing smokers to make cigarettes by themselves; none of the foregoing containing or for use with cannabis with a delta-9 THC concentration of more than 0.3% on a dry weight basis” (emphasis added). 

The additional language, italicized above, is the legal distinction between hemp and marijuana under the 2018 Farm Bill.  Hemp, which has a delta-9 THC concentration of not more than 0.3% on a dry weight basis, is not federally illegal under the CSA.  And so, this limitation may have avoided a CSA refusal because the goods excluded marijuana.  But the USPTO alleged that the amended goods encompassed hemp.  And therefore maintained that the mere descriptiveness refusal still applied.  In an attempt to address the USPTO’s concerns, Republic again amended its goods to include the limiting language “none of the foregoing containing or for use with cannabis.”  As a result, the USPTO refused the application on the grounds that the 4:20 mark was deceptively misdescriptive. 

            A term is considered deceptively misdescriptive if: 1. it misdescribes a quality, feature, function, or characteristic of the applied for goods; and 2: consumers would be likely to believe the misrepresentation. 

In support of the first prong, the USPTO relied on dictionary evidence showing that 4:20, and permutations of the term, is slang used to refer to marijuana and cannabis.  It provided printouts from several websites showing 4:20 used in connection with rolling papers and smoking paraphernalia.  Also, the USPTO relied on an article describing the benefits of a “spliff,” i.e., a cigarette combining tobacco and cannabis. 

To determine whether a consumer would believe the alleged misrepresentation, the Board applies a reasonably prudent consumer test.  Here, the reasonably prudent consumer is someone who consumes cannabis.  The USPTO relied on several websites offering smoking accessories to be used with cannabis and blog posts discussing those accessories and their uses with cannabis.  This allegedly supported that the reasonably prudent cannabis user would believe that the goods under the 4:20 mark contain or are to be used with cannabis. 

Republic argued that 4:20 is used to refer to a smoker’s happy hour akin to 5:00 and its association with alcoholic beverages.  And that a smoker’s happy hour includes both cannabis and non-cannabis smokers.  In support, Republic relied on a single article titled “Forget 5:00, 4:20 Is the New Happy Hour.”  The Board found the article to be replete with references to 4:20 in the context of cannabis, in particular, dispensaries holding 4:20 happy hours and a Maine “bud and breakfast” that offers a 4:20 happy hour featuring cannabis.  Accordingly, the Board determined that the article supported the USPTO’s position.  Republic also argued that 4:20 was incongruous with its goods because they explicitly excluded cannabis.  The Board summarily dismissed the argument as consumers would unlikely be aware of the limitation included in the application and it is therefore not controlling of public perception. 

The Board held that the first prong was met because the evidence established 4:20 is a term meaning cannabis, smoking articles such as rolling papers may be used with tobacco and cannabis, and consumers are familiar with the use of 4:20 to describe cannabis and paraphernalia used with cannabis.  The Board also held that the evidence supported that the reasonably prudent purchaser would understand the goods offered under the 4:20 mark contain or are to be used with cannabis.  The refusal to register the mark was therefore affirmed. 

On the one hand, cannabis companies should celebrate the Board’s holding that 4:20 describes cannabis.  This would make it difficult for one party to monopolize 4:20 in an industry where competitors frequently use the term.  But the decision may limit a cannabis company’s ability to establish rights in 4:20 for goods used with multiple substances, e.g., vaporizers, grinders, and tampers.  Republic appeared to be blunt with the USPTO concerning the use of its goods.  A lack of candor can lead to significant negative consequences, which we have previously discussed.  See Blunders That Made ‘Bakked’ Cannabis TM Go Up In Smoke.  But in this case, Republic’s candor appears to have missed the mark.  For now, the Board does not appear to be “4:20 friendly.”