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.

Kid Rock Files Applications to Register KID ROCK'S REDNECK RYE, KID ROCK'S REDNECK WHISKEY as Trademarks

Kid Rock might not actually be running for Senate (despite filing an application to register KID ROCK FOR SENATE as a trademark last year), but he may actually be expanding his line of alcoholic beverages, if recent trademark applications are any indication. On May 24th, Robert J. Ritchie (aka Kid Rock) filed applications to register KID ROCK'S REDNECK RYE and KID ROCK'S REDNECK WHISKEY as trademarks with the U.S. Patent and Trademark Office.

Not surprisingly, each application covers "distilled spirits" in Class 33. The rocker filed each application on an intent-to-use basis, suggesting he is not currently using these trademarks to sell distilled spirits 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, Kid Rock must actually start using these designations as trademarks and submit sufficient proof of same to the USPTO.

Before that can happen, however, Kid Rock might need to deal with a couple issues. One is that the USPTO is likely to require Robert Ritchie to submit his written consent to the use and registration of a trademark containing KID ROCK. Such consent is required because Section 2(c) of the Trademark Act prohibits the registration of any name, portrait, or signature that identifies a particular living individual without that individual's written consent. 15 USC 1052(c). That prohibition applies not only to full names, but also to "first names, surnames, shortened names, pseudonyms, stage names, titles, or nicknames, if there is evidence that the name identifies a specific living individual who is publicly connected with the business in which the mark is used, or who is so well known that such a connection would be assumed." TMEP 1206.01. The USPTO initially refused to register the KID ROCK FOR SENATE application, for example, in part because this written consent was not submitted (and still hasn't been).

Another potential issue is a rejection of this application based on a likelihood of confusion with existing KID ROCK trademark registrations. This is not an issue if similar trademarks are owned by the same party, but in Kid Rock's case, Top Dog Records, Inc. owns some KID ROCK trademark applications and registrations (including a pending application for KID ROCK'S MADE IN DETROIT covering "restaurant and bar services"). Because the whiskey and rye applications are in Robert J. Ritchie's name personally, and other KID ROCK applications/registrations are in a record company's name, the trademarks are owned by two different owners (in the USPTO's eyes), which requires (under Section 2(d) of the Trademark Act) the USPTO to refuse to register the latter filed applications in light of the existing applications or registrations, if the latter filed applications are deemed to be confusingly similar to the existing applications and registrations. For example, the KID ROCK FOR SENATE application (which covered apparel and was in Robert J. Ritchie's name) was initially refused registration because of a perceived likelihood of confusion with an existing registration for KID ROCK, owned by Top Dog Records, Inc., that also covered apparel.

These are not the first alcohol-related trademark applications filed by Robert J. Ritchie. The rocker currently owns registrations for AMERICAN BADASS BEER COMPANY (and a logo), BADASS BEER, BADASS, and an eagle design, all covering "beer."

MANHATTAN TAP WATER Merely Descriptive? Not So Fast...

As most attorneys [should] know, trademarks that merely describe the goods or services on or in connection with which the trademark is used are not registerable with the U.S. Patent and Trademark Office (with a few exceptions). See TMEP 1209.

On September 20th, the Manhattan Distilling Company, Inc. filed a federal trademark application for MANHATTAN TAP WATER. Does this trademark merely describe the goods on which the trademark is used?

Not in this case. The owner of the application should give you a hint. The specified goods are listed simply as "whiskey." This application shows how a mark that would be merely descriptive and unregisterable on certain goods (i.e. water) can be transformed into an arbitrary, and thus legally strong, trademark if used on other goods (i.e. whiskey).

Back to the trademark though - is this what they call water in Manhattan? If so, there must be a lot of thirsty New Yorkers.