907 Compliance with Other Statutes
37 C.F.R. §2.69 Compliance with other laws.
When the sale or transportation of any product for which registration of a trademark is sought is regulated under an Act of Congress, the Patent and Trademark Office may make appropriate inquiry as to compliance with such Act for the sole purpose of determining lawfulness of the commerce recited in the application.
Use of a mark in commerce must be lawful use to be the basis for federal registration of the mark. Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987); see 15 U.S.C. §§1051, 1127; 37 C.F.R. §2.69; In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993); In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968). Thus, the goods or services to which the mark is applied, and the mark itself, must comply with all applicable federal laws. See In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976) ("In order for [an] application to have a valid basis that could properly result in a registration, the use of the mark [has] to be lawful, i.e., the sale or shipment of the product under the mark [has] to comply with all applicable laws and regulations. If this test is not met, the use of the mark fails to create any rights that can be recognized by a Federal registration."). In addition, "the fact that the provision of a product or service may be lawful within a state is irrelevant to the question of federal registration when it is unlawful under federal law." In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016).
Generally, the USPTO presumes that an applicant’s use of the mark in commerce is lawful. Thus, registration will not be refused based on the absence of lawful use in commerce unless "either (1) a violation of federal law is indicated by the application record or other evidence, such as when a court or a federal agency responsible for overseeing activity in which the applicant is involved, and which activity is relevant to its application, has issued a finding of noncompliance under the relevant statute or regulation, or (2) when the applicant's application-relevant activities involve a per se violation of a federal law." In re Brown, 119 USPQ2d at 1351; see also Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045, 2047 (TTAB 1988).
If the record in an application based on Trademark Act Section 1(a) indicates that the mark itself or the identified goods or services violate federal law, registration must be refused under Trademark Act Sections 1 and 45, based on the absence of lawful use of the mark in commerce. See 15 U.S.C. §§1051, 1127; 37 C.F.R. §2.69; In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968).
For applications based on Trademark Act Section 1(b), 44, or 66(a), if the record indicates that the mark or the identified goods or services are unlawful, actual lawful use in commerce is not possible. See In re PharmaCann LLC, 123 USPQ2d 1122, 1124(TTAB June 16, 2017); In re JJ206, LLC, 120 USPQ2d 1568, 1569 (TTAB 2016); John W. Carson Found. v. Toilets.com, Inc., 94 USPQ2d 1942, 1948 (TTAB 2010). Thus, a refusal under Trademark Act Sections 1 and 45 is also appropriate for these non-use-based applications, because the applicant does not have a bona fide intent to lawfully use the mark in commerce. See 15 U.S.C. §§1051, 1127; In re PharmaCann LLC, 123 USPQ2d at 1124; In re JJ206, LLC,120 USPQ2d at 1569; John W. Carson Found., 94 USPQ2d at 1948.
Under Trademark Rules 2.61(b) and 2.69, 37 C.F.R. §§2.61(b) and 2.69, examining attorneys may require additional information about the goods or services and inquire about compliance with federal laws to support a refusal or otherwise facilitate proper examination. See TMEP §814. Before issuing an inquiry or refusal pertaining to the lawfulness of goods or services, examining attorneys must obtain approval from their managing attorney or senior attorney, who may seek additional guidance from the Administrator for Trademark Policy and Procedure.
For the purpose of determining whether to issue an inquiry or refusal, the USPTO will not regard apparent technical violations, such as labeling irregularities on specimens, as violations. For example, if a package fails to show all required labeling information, the examining attorney should not take any action. Likewise, the USPTO does not routinely solicit information regarding label approval under the Federal Alcohol Administration Act or similar acts. However, if the record indicates that the mark itself or the goods or services violate federal law, an inquiry or refusal must be made. For example, evidence indicating that the identified goods or services involve the sale or transportation of a controlled substance or drug paraphernalia in violation of the Controlled Substances Act ("CSA"), 21 U.S.C. §§801-971, would be a basis for issuing an inquiry or refusal. See In re JJ206, LLC, 120 USPQ2d at 1569-70; In re Brown, 119 USPQ2d at 1351-53. Subject to certain limited statutory exceptions, the CSA makes it unlawful to manufacture, distribute, or dispense a controlled substance; possess a Schedule I controlled substance; or sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia. See 21 U.S.C. §§ 812(b)(1)(B), 841(a)(1), 844(a), 863. Note that, regardless of state law, marijuana, marijuana extracts, and the psychoactive component THC remain Schedule I controlled substances under federal law and are subject to the CSA’s prohibitions. 21 C.F.R. §1308.11; see U.S. Const. Art. VI. Cl. 2; Gonzales v. Raich, 545 U.S. 1, 27, 29 (2005); United States v. Oakland Cannabis Buyers’ Coop., 532 U.S. 483, 491 (2001); In re JJ206, LLC, 120 USPQ2d at 1571; In re Brown, 119 USPQ2d at 1352. These prohibitions apply with equal force to the distribution and dispensing of medical marijuana. In re PharmaCann LLC, 123 USPQ2d at 1126.
When refusing registration, the examining attorney must indicate the particular law that is violated by the mark or the identified goods or services.
If, in response to a requirement for information or a refusal, the applicant indicates that the relevant goods or services comply with federal law, but there is extrinsic evidence indicating that the goods or services do not, in fact, comply with federal law, the examining attorney must refuse registration (or maintain the prior refusal), citing the relevant extrinsic evidence.
See TMEP §1205 regarding refusal of registration of matter that is protected by a statute or convention.