Although marijuana is becoming legal to varying degrees in an increasing number of states, your chances of getting a marijuana trademark registered with the United States Patent and Trademark Office (PTO) are still grim. In order to register a trademark with the PTO, the applicant has to show that the goods or services with which the mark will be used are permitted under federal law. Therefore, until marijuana gets reclassified by or removed from the federal Controlled Substances Act, trademarks intended for use with the sale of marijuana will continue to be dead on arrival at the PTO.
Nevertheless, some members of the marijuana industry are already staking out their brand territory by seeking to register marijuana-related trademarks for perfectly legal goods. In Margaritaville Enterprises, LLC v. Bevis, applicant Rachel Bevis, sought to register the mark MARIJUANAVILLE for t-shirts and other clothing, which she planned to sell at “locations that support the marijuana industry.” Bevis’ products were legal, but she soon found out that legality is not the only challenge to the registration of marijuana-related trademarks. Another challenge is likely to come from the purveyors of a competing “chemically induced mental paradise;” that is, alcohol.
In this case, the challenger was musician Jimmy Buffet’s Margaritaville Enterprises. Margaritaville Enterprises opposed registration of the MARIJUANAVILLE mark pursuant to Section 2(d) of the Lanham Act, arguing that it was likely to cause confusion with the already-registered MARGARITAVILLE mark for, among other things, t-shirts and other clothing. The Trademark Trial and Appeal Board (TTAB) turned to the Federal Circuit’s thirteen part “likelihood of confusion” test, otherwise known as the DuPont factors. Based on its analysis of these factors, the TTAB agreed that the MARIJUANAVILLE mark was indeed likely to be confused with the MARGARITAVILLE mark, and refused registration. Although the TTAB addressed most of the DuPont factors, three mattered most: (1) the strength of the MARGARITAVILLE mark; (2) the similarity of the marks; and (3) the similarity of the goods.
The Strength of the Margaritaville Mark
The TTAB first considered the strength of the MARGARITAVILLE mark (sometimes referred to as the “fame” of the mark by courts applying the DuPont factors). The TTAB noted that a mark is considered strong when a “significant portion of the relevant consuming public recognizes the mark as a source indicator.”
Here, the strength factor wasn’t a close call. Buffet released his “Margaritaville” song in 1977 and, according to an affidavit submitted by the musician, he has performed the song at every one of his concerts since. Starting in 1985, the song title became the basis for a chain of MARGARITAVILLE retail clothing stores, not to mention a restaurant and resort mini-empire. The TTAB found that, through Buffet’s business acumen, the MARGARITAVILLE mark has become famously associated with an “untroubled” “tropical” lifestyle, and of course the products and services that Buffet’s company sells to go with that lifestyle.
The Similarity of the Marks
The TTAB also considered the similarity of the two marks. The TTAB found that the words “Margaritaville” and “Marijuanaville” were linguistically similar. This was not entirely surprising, seeing as they both start with an ‘Ma,’ end with ‘aville,’ and have the same number of letters and syllables.
But more than that, the TTAB also found that the two marks created virtually the same commercial impression. In both cases, the name of a mind-altering substance is combined with “ville,” a suffix that often is used to indicate a “state of being.” As a result, the TTAB found, both marks gave a “highly” similar commercial impression of a “chemically induced mental paradise.” The TTAB bolstered this finding by pointing to numerous articles by third parties who had used the term “Marijuanaville” in a tongue and cheek manner to parody or reference Buffet’s song and company.
The Similarity of the Goods
And that brings us to the similarity of the goods. When two companies sell very different goods, the USPTO can tolerate the coexistence of similar or identical marks on the register. The goods and services sold by DELTA Airlines and DELTA Faucets, for instance, are dissimilar enough so that both marks could be registered. However, the more similar the goods, the less similarity can be tolerated between the marks. For example, last year the USPTO refused registration of the DUO mark for beer, because there was already a DUO mark for wine, a similar product.
That begs an important question for the burgeoning cannabis industry: are marijuana and alcohol going to be considered similar or related goods for trademark registration purposes? If they are, that means that the cannabis industry, assuming it ever gets a chance to register its marks at all, should already be treading very carefully when selecting company and product names, so as to steer clear of similarities with already-established wine, beer and spirits brands.
In Margaritaville Enterprises, LLC v. Bevis, the TTAB didn’t reach this critical question. Even though one party is connected to the alcohol industry and the other to the marijuana industry, the goods at issue were identical: souvenir clothing. One might be tempted to predict, based on this decision that, that a future TTAB panel will find marijuana and alcohol to be similar products because they both involve a “chemically induced mental paradise.” However, that part of the holding depended on the marks’ common usage of “ville.” What happens when a cannabis mark and an alcohol mark don’t share that sort of common linguistic trait? And, more importantly, what happens when the alcohol trademark in question is not as strong as MARGARITAVILLE (which is so strong that I bet you haven’t been able to get that silly song out of your head since you started reading this article)? These questions are still looking for their lost shaker of salt.