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Subjective Belief That Law Will Change Tomorrow Doesn’t Create Bona Fide Intent Today

Posted by Thomas P. Howard | Sep 04, 2021 | 0 Comments

By James Juo.

An intent-to-use (“ITU”) trademark application may be filed by “a person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce” later. 15 U.S.C. § 1051. Food and other ingestible products that contain cannabidiol (“CBD”), however, are presently considered by the U.S. Patent and Trademark Office (“USPTO”) to be per se violations of the Food, Drug, and Cosmetic Act (“FDCA”), see 21 U.S.C. § 331(ll), such that an applicant would lack the required bona fide intent under the Lanham Act to lawfully use the trademark in commerce in connection with such products.

But what if an applicant reasonably anticipates that the law will change in the foreseeable future such that the presently-unlawful product would be lawful in the future?

The Trademark Trial and Appeal Board (“TTAB”), however, has recently ruled that, notwithstanding any subjective belief in a beneficial future change in law, it is not a legal possibility for an applicant to have a bona fide intent to use a mark on goods that are unlawful at the time the ITU application is filed. In re Joy Tea Inc., Serial No. 88640009 (TTAB Sept. 1, 2021). “Until such a change [in the law] is made, Applicant cannot have a bona fide intent to use the mark in commerce.” Id. 

Here, Joy Tea had filed an ITU application with the USPTO for the FOR JOY mark covering “Tea-based beverages also containing CBD.”

The Examining Attorney at the USPTO, however, refused to register the applied-for mark because such goods currently are illegal under the FDCA. See 21 U.S.C. § 331(ll) (“The introduction or delivery for introduction into interstate commerce of any food to which has been added … a drug or biological product for which substantial clinical investigations have been instituted and for which the existence of such investigations has been made public….”).

On appeal, the TTAB framed the issue as, “whether an applicant for a federal trademark registration can have a bona fide intent to use its mark in commerce on goods that are currently prohibited under federal law but that may, perhaps, become lawful in the future.” Citing In re JJ206, LLC, dba JuJu Joints, 120 USPQ2d 1568 (TTAB 2016), the Board affirmed the refusal, holding “that if the goods on which a mark is intended to be used are unlawful [at the time of the application], there can be no bona fide intent to use the mark in lawful commerce.” Otherwise, “Applicant's alleged intent to use a mark on the currently unlawful goods would result in the mere reservation of a right in the mark until such time, if ever, at which the currently unlawful goods become lawful.” See also 15 U.S.C. § 1127 (“The term ‘use in commerce' means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”).

The trademark attorneys at Thomas P. Howard, LLC are experienced at prosecuting trademark applications before the USPTO, as well as enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.

About the Author

Thomas P. Howard

Thomas Howard is an experienced trial lawyer that handles intellectual property litigation nationwide, including copyright, trademark, trade secret and patent litigation, as well as complex civil litigation, including breach of contract, interference with contract, breach of fiduciary duty, conspiracy, fraud and fraudulent transfer of assets.


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