In Brief: A trademark that is generally known to refer to the use of a controlled substance cannot be federally registered.
Here’s What Happened:
Various versions of “4:20” is cannabis culture slang for the cocktail hour for marijuana and hashish consumption. Because marijuana is illegal at the federal level under the Controlled Substances Act, the USPTO rejects any trademarks that are related to marijuana and other controlled substances.
Republic Technologies (NA) LLC is a leading provider of smoking accessories.
Republic tried to register “4:20” as a trademark. After the application was rejection, Republic amended its identification of goods and services 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” (emphasis added).” The change didn’t help. The USPTO refused registration because the connection between 4:20 and the use of marijuana rendered the mark deceptively misdescriptive.
Republic appealed to the Trademark Trial and Appeal Board.
A misdescriptive term: (1) misdescribes a quality, feature, function or characteristic of the applied for goods; and (2) consumers would be likely to believe the misrepresentation.
For the first prong, the Board used the dictionary evidence that the USPTO relied on to determine that 4:20, in all of its permutations, refers to marijuana and cannabis. Republic tried to argue that the 4:20 happy hour referred to all types of smoking. The Board rejected the argument.
For the second prong, the Board applied the reasonably prudent consumer test. In this case, a reasonably prudent consumer would be one 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 produced one article to counter this. The article titled “Forget 5:00, 4:20 Is the New Happy Hour.” The Board found numerous references to 4:20 in the context of cannabis in the article (oops). So the Board determined that article supported the USPTO and not Republic.
The Board affirmed the refusal to register 4:20.
Why You Should Know This: Until cannabis becomes legal at the federal level, cannabis trademarks cannot be registered by the USPTO. However, in states that have legalized cannabis, the state’s trademark registry will accept the mark.
Case Information: In re 4:20, Serial No. 90053762 (Trademark Trial and Appeal Board, December 7, 2023).