Deceptive matter is yet another pitfall faced by canna brands as they take steps to protect their intellectual property. According to the U.S. Trademark Act (commonly known as the Lanham Act), such matter may not be registered as a trademark (15 U.S.C. § 1052(a)). While to some extent this is a commonsense rule that seeks to protect the public, in practice its application can be surprisingly expansive. Cannabis brands should avoid using trademarks that could in any way be considered deceptive matter.
When determining if a trademark consists of deceptive matter, USPTO applies a three-part test:
(1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?
(2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?
(3) If so, is the misdescription likely to affect a significant portion of the relevant consumers’ decision to purchase?
In some cases, it’s not hard to conclude that USPTO will likely consider a trademark to consist of deceptive matter. Taking a hypothetical example, imagine a vodka called CannaVodka, which does not in fact contain cannabis. The term “Canna”, as used in this imaginary trademark, is clearly misdescriptive of the composition of the vodka. Given the proliferation of canna drinks in the market, it is reasonable to expect that prospective purchases will believe the vodka contains cannabis. And by the same token, the presence of cannabis is likely to be a selling point for consumers.
As we said earlier, though, USPTO can sometimes reach surprising conclusions when it comes to the Lanham Act’s bar on registering deceptive matter as trademarks. This blogger generally takes any brand’s claim of environmental friendliness with a grain of salt, on par with health insurance companies’ assurance that I will “love” their service.
Evidently, though, USPTO is less jaded. Recently, the agency has required brands making such claims to amend their applications, to clarify that their goods are in fact ecofriendly. Otherwise, the agency contends, the mark may be deceptive, insofar as it may be used in connection with goods that are in fact terrible for the planet.
When choosing trademarks, brands need to consider whether they could in any way be considered deceptive matter. This analysis is made by focusing on how the brand relates to the character, quality, function, composition or use of the products. Brands seeking trademark protection overseas need to be extra careful, as other trademark offices might not offer the same procedural off-ramps that the USPTO typically does.