JJ206, LLC, dba JuJu Joints

Trademark Trial and Appeal Board

Oct 27, 2016

No. 86474701 (T.T.A.B. Oct. 27, 2016)

This Opinion Is a
Precedent of the TTAB

Mailed: October 27, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re JJ206, LLC, dba JuJu Joints
_____
Serial Nos. 86474701 & 862361221
_____
Shreya B. Ley, Esq.
for JJ206, LLC.

Lindsey H. Ben, Trademark Examining Attorney, Law Office 108,
Andrew Lawrence, Managing Attorney (Serial No. 86474701).

Robert J. Struck, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney (Serial No. 86236122).
_____
Before Ritchie, Lynch, and Larkin,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

1 Because the cases have common questions of fact and of law, and the relevant portions of
the records are largely identical, the appeals are hereby consolidated. See, e.g., In re
Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012) (The Board sua sponte consolidated two
appeals). The TTABVUE citations herein include in parentheses the serial number of the
case to which the citation pertains.
Serial Nos. 86474701 & 86236122
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JJ206, LLC (“Applicant”) seeks registration on the Principal Register of the
following marks:
POWERED BY JUJU, in standard characters, for
“smokeless cannabis vaporizing apparatus, namely, oral
vaporizers for smoking purposes; vaporizing cannabis
delivery device, namely, oral vaporizers for smoking
purposes” in International Class 34;2 and
JUJU JOINTS, in standard characters, for “smokeless
marijuana or cannabis vaporizer apparatus, namely, oral
vaporizers for smokers; vaporizing marijuana or cannabis
delivery device, namely, oral vaporizers for smoking
purposes” in International Class 34.3
The Examining Attorney has refused registration of the POWERED BY JUJU intent-
to-use application based upon the absence of a bona fide intent to use the mark in
lawful commerce under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051,
1127. Similarly, the Examining Attorney has refused registration of the JUJU
JOINTS use-based application based upon lack of lawful use of the mark in commerce
under Sections 1 and 45 the Trademark Act, 15 U.S.C. §§ 1051, 1127. See Trademark
Manual of Examining Procedure (TMEP) § 907 (April 2016) (“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. Thus, a refusal under Trademark Act Sections 1 and 45 is also appropriate

2 Application Serial No. 86474701 was filed December 8, 2014 based upon an intent to use
the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
3 Application Serial No. 86236122 was filed March 28, 2014 based upon use in commerce
under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). The term “JOINTS” is
disclaimed.
Serial Nos. 86474701 & 86236122
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for these non-use-based applications, because the applicant does not have a bona fide
intent to lawfully use the mark in commerce.”). In both cases, Applicant appealed and
requested reconsideration, which each Examining Attorney denied. We affirm the
refusals to register.
“We have consistently held that, to qualify for a federal service mark [or
trademark] registration, the use of a mark in commerce must be ‘lawful.’” In re
Brown, 119 USPQ2d 1350, 1351 (TTAB 2016) (affirming the refusal for lack of lawful
use of a mark for the retail sale of herbs that included marijuana) (citations omitted);
see also Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 3 USPQ2d 1306, 1308 (Fed.
Cir. 1987) (“[a] valid application cannot be filed at all for registration of a mark
without ‘lawful use in commerce. . . .’”). Therefore, “any goods . . . for which the mark
is used must not be illegal under federal law.” Brown, 119 USPQ2d at 1351.
It logically follows that if the goods on which a mark is intended to be used are
unlawful, there can be no bona fide intent to use the mark in lawful commerce. In
John W. Carson Found. v. Toilets.com, Inc., 94 USPQ2d 1942 (TTAB 2010), the
applicant previously had been permanently enjoined by a court against using the
applied-for mark because it violated the right of publicity of the opposer’s predecessor
in interest. The Board therefore ruled that the applicant lacked the necessary bona
fide intent to use the mark, stating, “[b]ecause the permanent injunction enjoins
applicant from making the use required to obtain its federal trademark registration,
as a matter of law, applicant cannot make lawful use of its mark in commerce.
Therefore, it is a legal impossibility for applicant to have a bona fide intent to use its
Serial Nos. 86474701 & 86236122
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mark in commerce.” Id. at 1947-48. Similarly, where the identified goods are illegal
under the federal Controlled Substances Act (CSA), the applicant cannot use its mark
in lawful commerce, and “it is a legal impossibility” for the applicant to have the
requisite bona fide intent to use the mark.
In both applications in this case, Applicant has explicitly identified its goods as
vaporizing devices for cannabis4 or marijuana. The CSA makes it unlawful to sell,
offer for sale, or use any facility of interstate commerce to transport drug
paraphernalia, defined as “any equipment, product, or material of any kind which is
primarily intended or designed for use in manufacturing, compounding, converting,
concealing, producing, processing, preparing, injecting, ingesting, inhaling, or
otherwise introducing into the human body a controlled substance, possession of
which is unlawful under [the CSA].” 21 U.S.C. § 863; see also Brown, 119 USPQ2d at
1352 n.10. The CSA identifies marijuana as a controlled substance that is unlawful
to possess. 21 U.S.C. §§ 812(a) & (c) (identifying “Marihuana,” by its alternate
spelling, as a controlled substance); 841, 844 (placing prohibitions on the possession
of controlled substances). The CSA defines marijuana (or “marihuana”) as “all parts
of the plant Cannabis sativa L., whether growing or not; . . . the resin extracted from
any part of such plant; and every compound, manufacture, salt, derivative, mixture,
or preparation of such plant, its seeds or resin,” but for certain exceptions not relevant

4 “Cannabis” refers to “any of the preparations (as marijuana or hashish) or chemicals (as
THC) that are derived from the hemp and are psychoactive.” (www.merriam-webster.com).
The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v.
J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or regular fixed
editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Serial Nos. 86474701 & 86236122
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to Applicant’s goods.5 21 U.S.C. § 802(16). Based on this definition and the evidence
of record, we find that Applicant’s references to “cannabis” in its identifications are
to marijuana, as defined in the CSA. Thus, equipment primarily intended or designed
for use in ingesting, inhaling, or otherwise introducing cannabis or marijuana into
the human body constitutes unlawful drug paraphernalia under the CSA.
Therefore, we find that Applicant’s identified goods fall within the definition of
illegal drug paraphernalia under the CSA. The identifications of goods make clear
that Applicant’s devices are designed and intended for the introduction of marijuana
or cannabis into the human body. Applicant has not disputed this fact in either case,
and has acknowledged that its goods are “marijuana-related”6 and “optimized” for
cannabis.7 In its Briefs, Applicant contends that its goods “should be considered in
the same league as other oral vaporizing apparatuses, like e-cigarettes,”8 but the
identifications of goods and Applicant’s own evidence regarding its goods make clear
that its devices are in a different “league” that violates the CSA.

5 Footnote 12, infra, includes a discussion of some exceptions that may apply to the goods and
services in third-party registrations submitted by Applicant.
6 See, e.g., Serial No. 86236122, 4 TTABVUE 17 (Applicant’s Request for Reconsideration);
Serial No. 86474701, 4 TTABVUE 10 (Applicant’s Request for Reconsideration). In addition,
Applicant submitted a posting regarding JUJU JOINTS being voted one of the best
marijuana products by Seattle Weekly. Serial No. 86236122, 4 TTABVUE 49 (Applicant’s
Request for Reconsideration).
7 Serial No. 86236122, 4 TTABVUE 17 (Applicant’s Request for Reconsideration); Serial No.
86474701, 4 TTABVUE 10 (Applicant’s Request for Reconsideration). Applicant also
submitted an article about its business and founder indicating that he is “cashing in on legal
marijuana” and that the vaporizers “come[] preloaded with 250 milligrams of cannabis oil.”
Serial No. 86236122, 4 TTABVUE 30 (Applicant’s Request for Reconsideration).
8 Serial No. 86474701, 7 TTABVUE 5 (Applicant’s Brief); Serial No. 86236122, 5 TTABVUE
4 (Applicant’s Brief).
Serial Nos. 86474701 & 86236122
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Applicant points to a pending third-party application9 and four third-party
registrations10 for goods or services that Applicant characterizes as “in support of the
marijuana industry,” and claims that its “goods should be treated no differently.”11
However, each application must be considered on its own record to determine
eligibility to register. In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635
(Fed. Cir. 2016); see also In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics
similar to Nett Designs’ application, the PTO’s allowance of such prior registrations
does not bind the Board or this court.”). Regardless, the third-party pending
application evidence shows nothing more than that the application was filed with the
USPTO. In re Binion, 93 USPQ2d 1531, 1535 n.3 (TTAB 2009). Further, there is no

9 Serial No. 86235836 for the mark YE OLDE DOPE SHOP identifies “Retail store services
featuring marijuana and related consumer goods.”
10 Registration No. 4315305 for the mark CANNABIS ENERGY DRINK and design identifies
“Energy drinks and sports drinks, including performance drinks, not included in other
classes, containing cannabis seed extract or mature cannabis stem extract.”
Registration No. 4651863 for the mark CCOP identifies “Retail store services featuring hemp
based products, namely, edible hemp oil, candies, confectioneries, chocolate, tinctures,
beverages, coffee, tea, cosmetics, shampoo, conditioner, salve, and vaporizers; providing
consumer product information via the Internet; administration of reduced price program
based on qualifying income, namely, administration of a discount program for enabling
participants to obtain discounts on goods and services through use of discount membership;
providing consumer information on reduced price wellness and health products and services.”
Registration No. 4330124 for the mark MJFREEWAY identifies “Computer services, namely,
providing on-line non-downloadable web-based computer software for patient documentation
and history, inventory control, and inventory management for use among medical marijuana
centers, dispensaries, collectives, and patients.”
Registration No. 4714986 for the mark MJARDIN PREMIUM CANNABIS and design
identifies “Industrial and engineering design services in the field of agriculture” and
Consulting in the field of agriculture.”
11 Serial No. 86474701, 7 TTABVUE 5-6 (Applicant’s Brief); Serial No. 86236122,
5 TTABVUE 4-5 (Applicant’s Brief).
Serial Nos. 86474701 & 86236122
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evidence that it ever matured into registration. With respect to the four registrations,
given the differences in the goods and services at issue, none of them presents
lawfulness issues analogous to those presented by Applicant’s applications.12
Applicant next argues that because Applicant markets its goods in states that
allow for the sale and distribution of marijuana, its current and intended use
therefore constitute lawful use in commerce under the Trademark Act. However, this
Board recently rejected this position in affirming the refusal to register a mark for
the retail sale of herbs that included marijuana, holding that “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.” Brown, 119
USPQ2d at 1351 (footnotes omitted). “Regardless of individual state laws that may
provide for legal activities involving marijuana, marijuana and its psychoactive

12 For example, some identified goods are described as “containing cannabis seed extract or
mature cannabis stem extract,” which likely falls outside the definition of marijuana in the
CSA: “The term ‘marihuana’ … does not include the mature stalks of [the Cannabis sativa
L.] plant, fiber produced from such stalks, oil or cake made from the seeds of such plant, any
other compound, manufacture, salt, derivative, mixture, or preparation of such mature stalks
(except the resin extracted therefrom), fiber, oil, or cake, or the sterilized seed of such plant
which is incapable of germination.” 21 U.S.C. § 802(16).
Similarly, other identified services involve the retail sale of a variety of “hemp based”
products, and the Drug Enforcement Administration of the U.S. Department of Justice has
clarified that “[a]ny portion of the cannabis plant, or any product made therefrom, or any
product that is marketed as a ‘hemp’ product, that is both excluded from the definition of
marijuana and contains no THC--natural or synthetic--(nor any other controlled substance)
is not a controlled substance.” Exemption From Control of Certain Industrial Products and
Materials Derived From the Cannabis Plant, 68 Fed. Reg. 55 (March 21, 2003) (final rule
notice).
Other services in the registrations involve providing software and industrial and
engineering design services in the field of agriculture. Even where the subject matter of such
services involves marijuana, on their face they present no CSA violation and therefore differ
markedly from Applicant’s drug paraphernalia goods.
Serial Nos. 86474701 & 86236122
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component, THC, remain Schedule I controlled substances under federal law and are
subject to the CSA’s prohibitions. 21 C.F.R. § 1308.11.” Id. at 1352;13 see also 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).
Applicant further maintains that because the jurisdictions where it does business
“comply with federal directives such as the Cole Memo,”14 its goods should be
considered lawful.15 The Cole Memo refers to a U.S. Department of Justice
memorandum to United States Attorneys which addressed the enactment of medical
marijuana laws in certain states, affirmed the illegality of marijuana under the CSA,
and set out federal “enforcement priorities” “to guide the Department’s enforcement
of the CSA against marijuana-related conduct.”16 The memo urges federal
enforcement efforts to focus on goals including preventing distribution of marijuana
to minors, preventing violence and firearm use in marijuana-related activities, and

13 See also Interpretation of Listing of ‘Tetrahydrocannabinols’ in Schedule I, 66 Fed. Reg.
51529 (Oct. 9, 2001) (“For the reasons provided herein, the Drug Enforcement Administration
(DEA) interprets the Controlled Substances Act (CSA) and DEA regulations to declare any
product that contains any amount of tetrahydrocannabinols (THC) to be a schedule I
controlled substance, even if such product is made from portions of the cannabis plant that
are excluded from the CSA definition of ‘marihuana.’”); 4 TTABVUE 24 (Applicant’s Request
for Reconsideration) (attaching New York Times article on JuJu Joints, which notes that they
contain “100 milligrams of THC, twice as much as a traditional joint”).
14 Serial No. 86474701, 7 TTABVUE 6 (Applicant’s Brief); Serial No. 86236122, 5 TTABVUE
6 (Applicant’s Brief).
15 Applicant thus raises one of the issues reserved in In re Brown, “whether use not lawful
under federal law, but not prosecuted by federal authorities, is thereby rendered sufficiently
lawful to avoid the unlawful use refusal.” Brown, 119 USPQ2d at 1351 n.3.
16 Serial No. 86474701, 4 TTABVUE 12-13 (The Cole Memo, attached to Applicant’s Request
for Reconsideration); Serial No. 86236122, 4 TTABVUE 50-51 (The Cole Memo, attached to
Applicant’s Request for Reconsideration).
Serial Nos. 86474701 & 86236122
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“[p]reventing the diversion of marijuana from states where it is legal under state law
in some form to other states.”17 We reject Applicant’s arguments that its use and
intended use of the mark are lawful based on the memorandum, as the memorandum
does not and cannot override the CSA,18 and in fact, explicitly underscores that
“marijuana is a dangerous drug and that the illegal distribution and sale of marijuana
is a serious crime.”19
Applicant’s remaining arguments involve policy issues that are beyond our
jurisdiction over issues of trademark registrability and that are, in any event, already
settled within the existing statutory framework of, and interplay between, the
Trademark Act and the CSA. For example, Applicant contends that refusing
trademark protection for marijuana-related goods and services that violate the CSA
“creates consumer confusion, allows for dilution of brand and quality, and opens the
Applicant up to infringement, which is contrary to the purpose and intent of the
[Trademark] Act.”20 Similarly, Applicant claims that its goods should be eligible for
registration because there are “accepted medical uses for marijuana,” and “the

17 Id.
18 The Cole Memo is intended only “as a guide to the exercise of investigative and
prosecutorial discretion” and specifically provides that “[n]either the guidance herein nor any
state or local law provides a defense to a violation of federal law, including any civil or
criminal violation of the CSA.” Serial No. 86474701, 4 TTABVUE 15 (Applicant’s Request for
Reconsideration); Serial No. 86236122, 4 TTABVUE 10 (Applicant’s Request for
Reconsideration). The Cole Memo thus provides no support for the registration of a trademark
used on goods whose sale is illegal under federal law. See generally Christensen v. Harris
County, 529 U.S. 576, 587 (2000) (“policy statements, agency manuals, and enforcement
guidelines” all “lack the force of law”) (citations omitted).
19 Id.
20 Serial No. 86474701, 7 TTABVUE 7 (Applicant’s Brief).
Serial Nos. 86474701 & 86236122
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marijuana industry is similar to the alcohol and tobacco industry.”21 This line of
reasoning fails to recognize that lawful use of a mark in commerce is a prerequisite
to federal registration, Gray, 3 USPQ2d at 1308, and that Congress has made the
sale of marijuana paraphernalia illegal under federal law. We cannot simply
disregard the requirement of lawful use or intended lawful use in commerce under
the Trademark Act, or Congress’s determination as to what uses are illegal,
regardless of the alleged business or consumer consequences of denying registration,
and regardless of any analogies between marijuana and other goods that do not
violate the CSA.
In conclusion, because Applicant’s identified goods constitute illegal drug
paraphernalia under the CSA, Applicant’s use and intended use of the applied-for
marks on these goods is unlawful, and cannot serve as the basis for federal
registration.
Decision: The refusals to register Applicant’s marks under Sections 1 and 45 the
Trademark Act, 15 U.S.C. §§ 1051, 1127, are affirmed.

21 Id. at 9; Serial No. 86236122, 5 TTABVUE 7 (Applicant’s Brief).