Joy Tea Inc.

Trademark Trial and Appeal Board

Sep 1, 2021

88640009 (T.T.A.B. Sep. 1, 2021)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Hearing: July 20, 2021 Mailed: September 1, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Joy Tea Inc.
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Serial No. 88640009
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Laurence M. Sandell and Robert Kimmer of Mei & Mark LLP,
for Joy Tea Inc.
Tasneem Hussain, Trademark Examining Attorney, Law Office 118,
Michael W. Baird, Managing Attorney.
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Before Kuhlke, Coggins, and Dunn,
Administrative Trademark Judges.

Opinion by Coggins, Administrative Trademark Judge:
Joy Tea Inc. (“Applicant”) seeks registration on the Principal Register of the mark
FOR JOY (in standard characters) for
Tea; Tea extracts; Tea-based beverages; Tea-based
beverages also containing CBD; Tea-based iced beverages;
Tea-based milk tea; Barley tea; Beverages made of tea;
Beverages with a tea base; Black tea; Buckwheat tea; Chai
tea; Chamomile tea; Chamomile-based beverages; Citron
tea; Coffee and tea; Earl Grey tea; Fermented tea; Fruit
teas; Ginger tea; Ginseng tea; Green tea; Herb tea; Herbal
tea; Herbal food beverages; Iced tea; Instant tea; Jasmine
tea; Kombucha tea; Lime tea; Lime blossom tea; Mixes for
making tea; Mixes in the nature of concentrates, syrups or
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powders used in the preparation of tea based beverages;
Oolong tea; Peppermint tea; Red ginseng tea; Roasted
brown rice tea; Rooibos tea; Rose hip tea; Rosemary tea;
Sparkling tea; Syrups for making tea; Tieguanyin tea;
White tea; White lotus tea (Baengnyeoncha); all of the
foregoing being legal under both state and federal laws and
containing ingredients solely derived from hemp with a
delta-9 tetrahyrocannabinol (THC) concentration of not
more than 0.3 percent on a dry weight basis in
International Class 30.1
The Trademark Examining Attorney refused registration under Sections 1 and 45
of the Trademark Act, 15 U.S.C. §§ 1051 and 1127, on the ground that Applicant does
not have a bona fide intent to use the mark in lawful commerce because the goods are
not in compliance with several sections of the Federal Food, Drug, and Cosmetic Act
(“FDCA”), including 21 U.S.C. §§ 321(ff) and 331(ll), as Applicant’s goods either
contain or may contain cannabidiol (CBD).
When the refusal was made final, Applicant requested reconsideration. The
Examining Attorney denied the request for reconsideration, and Applicant appealed
to this Board. The appeal proceeded with briefing and an oral hearing. We affirm the
refusal to register.
The record shows that “CBD” is an abbreviation for “cannabidiol,” a chemical
component of the cannabis plant that is regulated under the FDCA as a drug. July
22, 2020 Office Action at 5-31 (material from the U.S. Food and Drug Administration

1 Application Serial No. 88640009 was filed on October 2, 2019, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide
intention to use the mark in commerce.

Citations to the briefs in the appeal record refer to the TTABVUE docket system. Citations
to the prosecution file refer to the .pdf version of the TSDR system record. In re Consumer
Protection Firm PLLC, 2021 USPQ2d 238, *3 n.3 (TTAB 2021).
Serial No. 88640009
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(“FDA”)). As the Examining Attorney points out, see 6 TTABVUE 5, the FDCA
currently prohibits “[t]he 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 . . . .” 21 U.S.C. § 331(ll). There
is no question that the identification of Applicant’s goods includes food to which CBD
has been added, that CBD was the subject of substantial clinical investigations
during prosecution of the involved application, and that this makes some of
Applicant’s goods currently illegal under the FDCA.
Trademark Act Section 1(b), 15 U.S.C. §1051(b), states that “a person who has a
bona fide intention, under circumstances showing the good faith of such person, to
use a trademark in commerce” may apply for registration of the mark. The issue in
this appeal is narrow and simple: 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. Or, as Applicant phrases it, whether there is a “statute or applicable
regulation [that] supports disqualifying an applicant’s bona fide intent that stems
from a belief—especially an objectively reasonable belief—that its intended future
commerce will be legal future commerce.” 4 TTABVUE 2; see also 8 TTABVUE 3. The
Board has previously addressed this issue, if not the specific arguments that
Applicant now makes.
Serial No. 88640009
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In In re JJ206, LLC, 120 USPQ2d 1568 (TTAB 2016), a case involving the refusal
under Trademark Act Sections 1 and 45 of an intent-to-use application which
identified cannabis-related goods illegal under the federal Controlled Substances Act
(CSA), the Board noted that to qualify for a federal trademark registration, it has
been consistently held that the use of a mark in commerce must be lawful, and that
any goods for which the mark is used must not be illegal under federal law. See JJ206,
120 USPQ2d at 1569 (citing In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016), and
Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 3 USPQ2d 1306, 1308 (Fed. Cir.
1987)). The Board then concluded that 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.” See JJ206, 120 USPQ2d at 1569 (citing John W.
Carson Found. v. Toilets.com, Inc., 94 USPQ2d 1942, 1947-48 (TTAB 2010)). In
affirming the refusals under Sections 1 and 45, the Board concluded that “because
Applicant’s identified goods constitute illegal drug [i.e., cannabis-related]
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.” JJ206, 120 USPQ2d at 1572.
In the current appeal, Applicant “seeks to overturn, or at least narrow,” 4
TTABVUE 2, the holding of JJ206 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.” 120 USPQ2d at 1596. In support of its position, Applicant makes three
broad arguments: (1) Office “regulations forbid evaluating the Applicant’s good faith
Serial No. 88640009
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intent in ex parte examination;” (2) a “rule that bona fide intent for future legal use
in commerce cannot exist where current use is not legal is incorrect;” and (3)
“Applicant has, and at all times had, a subjective bona fide intent to use its mark . . .
with the recited goods in future legal commerce” because it “anticipat[es] a beneficial
change in law within a reasonable amount of time.” See 4 TTABVUE 3, 5, 9, 10.
Applicant posits that “[t]here is an inherent conflict between” TRADEMARK
MANUAL OF EXAMINING PROCEDURE (TMEP) Sections 907 and 1101. 4 TTABVUE 4.
Specifically, Applicant points to TMEP § 1101 which states, in part, that the Office
“will not evaluate the good faith of an applicant in the ex parte examination of
applications,” while § 907 provides, in part, that for an intent-to-use application
“based on Trademark Act Section 1(b) . . . , 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 . . . appropriate
for th[is] non-use-based application[], because the applicant does not have a bona fide
intent to lawfully use the mark in commerce.” Section 907 provides examples of such
situations, including when identified goods involve the sale or transportation of a
controlled substance in violation of federal law.
We see no conflict in the practice applicable to examination of intent-to-use
applications. Applicant ignores further guidance in § 1101 which explains that while
an “applicant’s sworn statement of a bona fide intention to use the mark in commerce
[generally] will be sufficient evidence of good faith in the ex parte context,” the Office
may nonetheless “make an inquiry in an ex parte proceeding [if] evidence of record
Serial No. 88640009
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clearly indicates that the applicant does not have a bona fide intention to use the
mark in commerce.” In the present situation, where some of Applicant’s goods are
prohibited under federal law, the record clearly indicates that it is not possible for
Applicant to have “an intention to use the mark consistent with the [Trademark] Act’s
definition of ‘use in commerce’” which requires “the bona fide use of a mark in the
ordinary course of trade.” See M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 114
USPQ2d 1892, 1898 (Fed. Cir. 2015) (quoting 15 U.S.C. § 1127). “[I]t has been the
consistent position of the Board and the USPTO that a bona fide use of a mark in
commerce means a ‘lawful use in commerce.’” John W. Carson Found. v. Toilets.com,
Inc., 94 USPQ2d at 1948 (citing In re Midwest Tennis & Track Co., 29 USPQ2d 1386,
1386 fn. 2 (TTAB 1993), and Clorox Co. v. Armour-Dial, Inc., 214 USPQ 850, 851
(TTAB 1982)).
In M.Z. Berger, the court held that at the time of the application “the
circumstances must indicate that the applicant’s intent to use the mark was firm and
not merely intent to reserve a right in the mark.” 114 USPQ2d at 1898. It is therefore
not possible to have a bona fide intent to use a mark on goods which are unlawful at
the time of the application. If it were 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. To be clear, bona fide intent to use a mark on goods also requires lawful use–
something currently unavailable for some of Applicant’s identified goods.
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This is consistent with guidance given by the Trademark Examination Operation
(TMEO) after enactment of the Agriculture Improvement Act of 2018, Pub. L. 115-
334 (the 2018 Farm Bill), which amended the Agricultural Marketing Act of 1946 to
change, inter alia, certain federal authorities relating to the production and
marketing of “hemp.” For applications filed before the effective date of the 2018 Farm
Bill that identified cannabis-related goods, the TMEO allowed applicants to amend
their filing basis and filing dates to the effective date of the 2018 Farm Bill as
provided in Examination Guide 1-19 Examination of Marks for Cannabis and
Cannabis-Related Goods and Services after Enactment of the 2018 Farm Bill (May 2,
2019), see www.uspto.gov/sites/default/files/documents/Exam%20Guide%201-19.pdf,
to overcome non-compliance with the CSA as a ground for refusal if the goods were
derived from hemp. In articulating the guidance, the TMEO stated that “[s]uch
applications did not have a valid basis to support registration at the time of filing
because the goods violated federal law.” Examination Guide 1-19 at p. 2. It also
explained that because “[t]he 2018 Farm Bill explicitly preserved FDA’s authority to
regulate products containing cannabis or cannabis-derived compounds under the
FDCA[, and] CBD is an active ingredient in FDA-approved drugs and is a substance
undergoing clinical investigations . . . registration of marks for foods[ and] beverages
. . . containing CBD will still be refused as unlawful under the FDCA, even if derived
from hemp, as such goods may not be introduced lawfully into interstate commerce.
21 U.S.C. §331(ll).” Id.
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Here, the involved application was filed under Trademark Act Section 1(b) based
on Applicant’s stated bona fide intent to use the mark FOR JOY in commerce in
connection with food to which CBD has been added. Because such goods are illegal
under the FDCA, “as a matter of law, [A]pplicant cannot make lawful use of its mark
in commerce. Therefore, it is a legal impossibility for [A]pplicant to have a bona fide
intent to use its mark in commerce.” John W. Carson Found. v. Toilets.com, Inc., 94
USPQ2d at 1948.
Applicant argues that it “has a bona fide intent to show legal use of its CBD -based
products in commerce in the future because it reasonably anticipates that the legal
framework will change within a reasonable amount of time.” 4 TTABVUE 6. The
reliance in Applicant’s last argument on a “reasonable amount of time” is inapposite.
“We must determine the eligibility of [CBD]-related marks for federal registration by
reference to the [FDCA] as it is written, not as it might be enforced [or amended] at
any point in time by any particular [FDA Commissioner]. The [FDCA] in its current
form makes Applicant’s intended uses of its mark[] unlawful, and its mark[ is] thus
ineligible for federal registration.” PharmaCann, 123 USPQ2d 1122, 1128 (TTAB
2017). See also M.Z. Berger & Co. v. Swatch AG, 114 USPQ2d at 1898 (“The
[statutory] reference to ‘circumstances showing the good faith’ strongly suggests that
the applicant’s intent must be demonstrable and more than a mere subjective
belief.”). Until such a change is made, Applicant cannot have a bona fide intent to use
the mark in commerce.
Serial No. 88640009
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As mentioned above, it has been consistently held that the use of a mark in
commerce must be lawful, and that any goods for which the mark is used must not
be illegal under federal law. See JJ206, 120 USPQ2d at 1569. This idea was
reexamined in PharmaCann, where the Board provided an extensive analysis of
unlawful use refusals. See 123 USPQ2d at 1123-1128. Based on prior decisions of this
Board and multiple courts, including M.Z. Berger which held that “an applicant’s
intent must reflect an intention to use the mark consistent with the [Trademark]
Act’s definition of ‘use in commerce’” requiring “bona fide use of a mark,” M.Z. Berger,
114 USPQ2d at 1898, we decline Applicant’s invitation “to overturn, or at least
narrow,” 4 TTABVUE 2, the holding in JJ206 “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.” 120 USPQ2d at 1569. To do so would violate the longstanding
prohibition against reservation of a mark. See 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.”).
Decision: The refusal to register Applicant’s mark FOR JOY under Sections 1 and
45 of the Trademark Act is affirmed on the ground that Applicant does not have a
bona fide intent to use the mark in lawful commerce because the goods are not in
compliance with the FDCA.