Distillery in New York Files Application to Register MARIJUISKEY as a Trademark for Whiskey. Any Issues?

On October 28, New Scotch, LLC dba New Scotland Spirits filed a federal trademark application for MARIJUISKEY covering "distilled spirits, namely, whiskey" in Class 3.

But what does this mark mean? Is it a combination of "marijuana" and "whiskey"? Like mariju-iskey? If so, the applicant is likely to run into issues during the registration process.

A trademark must be in lawful use in interstate commerce for the U.S. Patent and Trademark Office ("USPTO") to register it. See TMEP 907. If a trademark or the goods/services offered in conjunction with a trademark violate federal law, the USPTO will refuse registration under Sections 1 and 45 of the Trademark Act because the mark is not in lawful use. 15 USC 1051, 1127.

The federal Controlled Substances Act, among other things, prohibits the manufacturing, distributing, dispensing, or possessing of marijuana and marijuana-based preparations. Therefore, the USPTO will (and frequently does) refuse the registration of trademarks for marijuana or goods containing marijuana. Further, the USPTO is a federal office governed by federal law, so the fact that marijuana may be legal in the applicant's state is irrelevant.

Therefore, if MARIJUISKEY is a whiskey that contains marijuana, the applicant will get a refusal under Sections 1 and 45 of the Trademark Act, though that refusal may be premature at this point. This application was filed on an intent-to-use basis, meaning the applicant has not yet submitted a specimen showing the USPTO how it uses this mark on its goods (and a cursory review of the applicant's website does not reveal this whiskey). Therefore, other than assumptions about the name, there's currently nothing to suggest this whiskey has anything to do with marijuana.

However, the mark itself may prompt the examining attorney assigned to this application to issue an inquiry into the lawfulness of the applicant's goods and request additional information, which they are permitted to do. See TMEP 907. If the applicant's evidence indicates this whiskey does contain marijuana, and therefore isn't lawful at the federal level, the USPTO may refuse registration based on this "extrinsic evidence" even if the description of goods in the application itself (i.e., "distilled spirits, namely, whiskey") is lawful. Id. On the other hand, if it turns out MARIJUISKEY whiskey doesn't contain marijuana, there's no basis for a refusal based on unlawful use. 

Interested in the fate of MARIJUISKEY? Check in on the application in approximately three months after it is reviewed by an examining attorney.

Is Jimmy Buffett's Margaritaville Getting into the Marijuana Business? Recent Trademark Applications for IT'S 4:20 SOMEWHERE and CORAL REEFER Say Maybe

It's 5:00 somewhere? Not anymore. 4:20 is the new 5:00, at least according to recent trademark applications filed by the entity operating the Jimmy Buffett's Margaritaville restaurants and resorts.

On May 3rd, Margaritaville Enterprises, LLC, founded by Jimmy Buffett, filed twelve federal trademark applications with the USPTO covering what appears to be a variety of marijuana-focused goods and services. The applications are for two phrases - IT'S 4:20 SOMEWHERE and CORAL REEFER. Margaritaville Enterprises filed each phrase in six different classes of goods and services each, rather than listing the six classes in a single application (hence the twelve applications). Applicants often do this to prevent an issue in one class from holding up all the other classes (which is what would happen if all the classes were listed in a single application).

The goods and services covered by the IT'S 4:20 SOMEWHERE and CORAL REEFER applications are, for the most part, the same and include:

• Smoking lounge services (Class 41);
• Herbal tinctures for medical purposes; medicated oils; medicated oral sprays; medicated creams and lotions (Class 5);
• Electronic cigarettes; cigarettes; cigars; tobacco; herbs for smoking; cigarette holders; cigarette lighters, and several related goods (Class 34 - IT'S 4:20 SOMEWHERE only);
• Electronic vaporizer pen for medical purposes sold empty (Class 10);
• Providing an online directory featuring information on physicians and health care providers (Class 35);
• Providing a website featuring health information in the field of medical marijuana and cannabis; Providing a website featuring information concerning cannabidiol (CBD) and tetrahydrocannabinol (THC) (Class 44);
• Bandanas; Belts; Dresses; Footwear, and several other clothing items (Class 25 - CORAL REEFER only)

Margaritaville Enterprises filed each application on an intent-to-use basis, suggesting it is not currently using these phrases as trademarks for the listed goods/services but has a bona fide intention to do so in the near future. TMEP 806.01(b); 15 USC 1051(b). Before these applications can mature into registrations, the phrases must actually be used as trademarks for the listed goods/services and sufficient evidence of that use must be submitted to the USPTO. TMEP 902.

Notice that Margaritaville Enterprises did not list "marijuana" as one of the goods in its applications. That is because the sale of marijuana is illegal at the federal level. The USPTO will refuse to register any trademark for the sale of marijuana because that sale violates federal law, and a trademark must be in lawful use in commerce for the USPTO to register it. I blogged about this issue before here.

So is Jimmy Buffett's Margaritaville moving into the marijuana business? Will you be able to get marijuana as easy as margaritas at the Margaritaville restaurants and resorts in the near future? You be the judge (and pay attention to these applications to find out).

According to my quick search, Margaritaville Enterprises, LLC owns 432 active trademark applications or registrations with the USPTO, including several registrations for MARGARITAVILLE, like this one from 1995.

Company in Florida Files Trademark Application for "Life Force Infused" Water

One of the perks of searching the U.S. Patent and Trademark Office's (USPTO's) trademark database almost every day is getting to see a variety of interesting and unusual trademark applications. A federal trademark application filed for LOVE & LIGHT on July 28th by a company in Florida is one of those applications.

The mark itself, LOVE & LIGHT, is not unusual. It is the goods listed in the application that raise an eye. The applicant filed this application in Class 032 for "Bottled Drinking Water infused with life force energy." Life force energy? I'm not sure what that is. But it seems like something a company called "Universal Time Corporation" would file.

So is a trademark applicant allowed to list anything in the "Goods and Services" part of the trademark application? Pretty much. The law only requires that the identification of goods and/or services "be specific, definite, clear, accurate, and concise." TMEP 1402.01.

That being said, to qualify for federal trademark registration, the use of the mark in commerce must be lawful. See TMEP 907. Under 37 C.F.R. §§2.61(b) and 2.69, examining attorneys can require additional information about the goods or services to determine compliance with federal law. If the record indicates that the mark or the goods/services violate federal law, a refusal to register the mark can be made. Applicants for marijuana related services are running into this problem, even if operating in states where marijuana sales are legal, because sale of the plant is still prohibited under the federal Controlled Substances Act, 21 U.S.C. §§801-971.

Is the sale of "life force infused" goods illegal? I don't think so. This applicant previously registered its business name, UNIVERSAL TIME, as it relates to the same life force infused energy water without any issue. Additionally, the USPTO does not "regard apparent technical violations, such as labeling irregularities on specimens, as violations." TMEP 907.

That leaves it up to the consumer to determine if buying "Bottled Drinking Water infused with life force energy" a good investment. I think I'll pass.