throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA967330
`04/16/2019
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petition for Cancellation
`
`Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.
`
`Petitioner Information
`
`Name
`
`Entity
`
`Address
`
`CBDMD, LLC
`
`Corporation
`
`4521 Sharon Road, Suite 450
`Charlotte, NC 28211
`UNITED STATES
`
`Citizenship
`
`North Carolina
`
`Attorney informa-
`tion
`
`Blake E. Vande Garde
`Erickson Kernell IP, LLC
`8900 State Line Road, Suite 500
`Leawood, KS 66206
`UNITED STATES
`ekdkdocket@kcpatentlaw.com, bvg@kcpatentlaw.com,
`debbied@kcpatentlaw.com
`913-549-4700
`
`Registration Subject to Cancellation
`
`Registration No.
`
`5173264
`
`Registration date
`
`03/28/2017
`
`Registrant
`
`Majik Medecine, LLC
`629 Village Lane South
`Mandeville, LA 70471
`UNITED STATES
`
`Goods/Services Subject to Cancellation
`
`Class 003. First Use: 2016/02/21 First Use In Commerce: 2016/02/21
`All goods and services in the class are subject to cancellation, namely: Skin and body topical lotions,
`creams and oils for cosmetic use; all of the aforementioned containing CBD
`
`Class 005. First Use: 2016/02/21 First Use In Commerce: 2016/02/21
`All goods and services in the class are subject to cancellation, namely: Medicinal creams for skin
`care; Medicinal herbal preparations; Medicinal oils; Herbs for medicinal purposes; all of theaforemen-
`tioned containing CBD
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`The mark is merely descriptive
`
`Trademark Act Sections 14(1) and 2(e)(1)
`
`The mark is deceptively misdescriptive
`
`Trademark Act Sections 14(1) and 2(e)(1)
`
`No use of mark in commerce before application,
`amendment to allege use, or statement of use
`was filed
`
`Trademark Act Sections 14(1) and 1(a), (c), and
`(d)
`
`

`

`Failure to function as a mark
`
`Trademark Act Sections 14(1) and 1,2 and 45
`
`Dilution by blurring
`
`Dilution by tarnishment
`
`Registrant not rightful owner of mark for identi-
`fied goods or services
`
`Fraud on the USPTO
`
`Trademark Act Sections 14(1) and 43(c)
`
`Trademark Act Sections 14(1) and 43(c)
`
`Trademark Act Sections 14(1) and 1
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
`
`Marks Cited by Petitioner as Basis for Cancellation
`
`U.S. Application
`No.
`
`87613823
`
`Application Date
`
`09/19/2017
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`CBDMD SYNERGY
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Dietary and nutritional supplements forpets; Dietary and nutritional supplements
`in the form of tinctures, drops, capsules, oils, gummies, and powders; Topical
`analgesic creams, gels, salves, sprays, powders, and ointments; Topical medic-
`ated anti-inflammatory creams, gels, salves, sprays, powders, and ointments;
`Topical moisturizing creams, gels, salves, sprays, powders, and ointments; all of
`the foregoing containing CBD
`Class 034. First use: First Use: 0 First Use In Commerce: 0
`Electronic cigarettes; electronic cigarette liquid containing CBD, namely, elec-
`tronic cigarette liquid comprised of vegetable glycerin; electronic cigarette liquid
`comprised of CBD and flavorings in liquid form, other than essential oils, used to
`refill electronic cigarette cartridges
`
`U.S. Application
`No.
`
`87613850
`
`Application Date
`
`09/19/2017
`
`Registration Date
`
`NONE
`
`Word Mark
`
`SYNERGY CBDMD
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`NONE
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Dietary and nutritional supplements forpets; Dietary and nutritional supplements
`in the form of tinctures, drops, capsules, oils, gummies, and powders; Topical
`analgesic creams, gels, salves, sprays, powders, and ointments; Topical anti-
`inflammatory creams, gels, salves, sprays, powders, and ointments; Topical
`medicated moisturizing creams, gels, salves, sprays, powders, and ointments;
`all of the foregoing containing CBD
`Class 034. First use: First Use: 0 First Use In Commerce: 0
`Electronic cigarettes; electronic cigarette liquid containing CBD, namely, elec-
`tronic cigarette liquid comprised of vegetable glycerin; electronic cigarette liquid
`comprised of CBD and flavorings in liquid form, other than essential oils, used to
`refill electronic cigarette cartridges
`
`87613823#TMSN.png( bytes )
`87613850#TMSN.png( bytes )
`Petition_for_Cancellation_20190415.pdf(216824 bytes )
`EXHIBIT_A_CBD_MD_20190207.pdf(122173 bytes )
`EXHIBIT_B_LA_SOS_Report.pdf(176912 bytes )
`EXHIBIT_D_ResponseToOA_20161214.pdf(33468 bytes )
`EXHIBIT_E_AllegeUse.pdf(828861 bytes )
`EXHIBIT_F_CBDAdvisoryNotice.pdf(388893 bytes )
`EXHIBIT_G_ATCToCrackDownonCBDOilSalesinLouisiana.pdf(1396797 bytes )
`EXHIBIT_H_CBD MD_ louisianacream_lotion_Google Search.pdf(216528 bytes
`
`) E
`
`XHIBIT_I_cbdmd_GoogleSearch.pdf(186566 bytes )
`EXHIBIT_J_CBD_MD_Home_Facebook.pdf(706163 bytes )
`EXHIBIT_K_CBDMDUSA_Home_Facebook.pdf(561775 bytes )
`EXHIBIT_M_CBD_DISCLAIMED.pdf(336845 bytes )
`EXHIBIT_N_MD_DISCLAIMED.pdf(400991 bytes )
`Exhibit_L_cbdMD.pdf(67883 bytes )
`Exhibit_C_Part_1.pdf(2865693 bytes )
`Ex C pt2-r.pdf(3219623 bytes )
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`Signature
`
`/Blake E. Vande Garde/
`
`Name
`
`Date
`
`Blake E. Vande Garde
`
`04/16/2019
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In the matter of Registration No. 5,173,264
`Date of Issue: March 28, 2017
`
`
`
`)
`CBDMD, LLC.,
`)
`
` Petitioner, )
`
`)
` v.
`)
`
`)
`MAJIK MEDICINE, LLC,
`)
`
`)
` Registrant. )
`
`
`
`
`
`Cancellation No._____________
`
`PETITION FOR CANCELLATION
`
`CBDMD, LLC (“Petitioner”), a North Carolina limited liability company
`
`
`
`having a principal place of business at 4521 Sharon Road, Suite 450, Charlotte, NC
`
`28211, believes that it has been and will continue to be damaged by U. S. Trademark
`
`Reg. No. 5,173,264 (the “CBD MD Registration”) for the mark CBD MD in Classes 003
`
`for skin and body topical lotions, creams and oils for cosmetic use; all of the
`
`aforementioned containing CBD, and 005 for medicinal creams for skin care; medicinal
`
`herbal preparations; medicinal oils; herbs for medicinal purposes; all of the
`
`aforementioned containing CBD, and hereby petitions to cancel the same.
`
`
`
`
`
`As grounds of opposition, it is alleged that:
`
`1. Daniel Sinclair (“Sinclair”) is an individual who, on information and
`
`belief, resides at 629 Village Lane South, Mandeville, Louisiana, 70471.
`
`
`
`2. Brenda N. Kraft (“Kraft”) is an individual who, on information and belief,
`
`resides at 3873 HWY 17, Delhi, Louisiana, 71232.
`
`

`

`In the matter of
`Registration No. 5,173,264
`
`
`
`
`
`
`
`
`
`
`
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` Page 2
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`3. Christy Peachey (“Peachey”) is an individual who, on information and
`
`belief, resides at 312 Independence Dr., Mandeville, Louisiana, 70471.
`
`
`
`4. MM, LLC is limited liability company which, on information and belief, is
`
`domiciled at 629 Village Lane South, Mandeville, Louisiana, 70471.
`
`
`
`5. The CBD MD Registration issued to MM, LLC on March 28, 2017. A
`
`printout of the current status and title of the CBD MD Registration from the USPTO’s
`
`Trademark Status & Document Retrieval (“TSDR”) database is attached as Exhibit A.
`
`the mark is not incontestable.
`
`
`
`6. On December 21, 2011, Sinclair, Kraft and Peachey formed a limited
`
`liability company under the laws of Louisiana named Majik Medicine, LLC. Sinclair is
`
`the manager of MM, LLC, Kraft is a member of MM, LLC, and Peachey is a member of
`
`MM, LLC. Attached as Exhibit B is a true and correct copy of the Business Summary
`
`page for MM, LLC taken from the Louisiana Secretary of State website.
`
`
`
`7. As of April 5, 2019, MM, LLC is not in good standing for failing to file an
`
`annual report with the Louisiana Secretary of State.
`
`
`
`8. On February 21, 2016, MAJIK MEDICINE, LLC (“MM, LLC” or
`
`“Registrant”) applied for the CBD MD registration under 15 U.S.C.§ 1051(b) as an
`
`intent-to-use application and it was labeled as U.S. Trademark Application No
`
`86914580.
`
`

`

`In the matter of
`Registration No. 5,173,264
`
`
`
`
`
`
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` Page 3
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`9. On June 14, 2016, an Office Action was issued for the CBD MD
`
`application. Attached as Exhibit C is a true and correct copy of the Office Action taken
`
`from the TSDR database.
`
`
`
`10. On December 14, 2016 a Response to Office Action was filed for the
`
`CBD MD application. Attached as Exhibit D is a true and correct copy of the Response
`
`to Office Action taken from the TSDR database.
`
`
`
`11. On December 14, 2016 an Amendment to Allege Use was filed under
`
`15 U.S.C. 1051(c) along with a specimen. MM, LLC amended its date of first use to
`
`February 21, 2016. Attached as Exhibit E is a true and correct copy of the Amendment
`
`to Allege Use taken from the TSDR database.
`
`
`
`12. Petitioner started selling products including topical lotions, topical
`
`creams, topical oils, medicinal lotions, medicinal creams and medicinal oils under the
`
`CBDMD mark at least as early as May 16, 2017.
`
`
`
`13. On information and belief, MM, LLC abandoned and/or never used
`
`the CBD MD mark in interstate commerce.
`
`
`
`14. All cannabinoids, including Cannabidiol (CBD) are illegal in Louisiana,
`
`(See attached Exhibit F is a true and correct copy of the CBD ADVISORY NOTICE
`
`dated March 21, 2019 from the State of Louisiana Office of Alcohol and Tobacco
`
`Control and attached Exhibit G is a true and correct copy of an article entitled ATC to
`
`Crack Down on CBD Sales in Louisiana) and therefore MM, LLC never had a bona fide
`
`intention to use or ability to use the mark.
`
`

`

`In the matter of
`Registration No. 5,173,264
`
`
`
`
`
`
`
`
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` Page 4
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`15. Because MM, LLC abandoned and/or never used the CBD MD mark
`
`in interstate commerce, yet they filed amendments and declarations at the USPTO
`
`claiming use of the mark in interstate commerce, they fraudulently obtained and
`
`maintained the CBD MD Registration.
`
`
`
`
`
`Fraudulent Procurement and Maintenance of the CBD MD Registration
`
`16. Registration of the CBD MD mark is barred by Section 14(3) of the
`
`Trademark Act of 1946 because the CBD MD Registration was obtained fraudulently.
`
`
`
`17. MM, LLC made false representations to the U. S. Patent and
`
`Trademark Office (USPTO) regarding material facts when he signed declarations
`
`asserting ownership of the CBD MD mark.
`
`
`
`18. MM, LLC submitted a false declaration to the USPTO on December
`
`14, 2016 when they filed a Combined Response to Office Action and an Amendment to
`
`Allege Use declaring that CBD MD was in use in interstate commerce as of February
`
`21, 2016.
`
`
`
`19. MM, LLC knew their December 14 declaration was false because they
`
`knew that they did not use the CBD MD mark on goods outside the state of Louisiana.
`
`
`
`20. Attached as Exhibit H is a true and correct copy of an internet search
`
`conducted by Petitioner on March 1, 2019 for “CBD MD” Louisiana cream lotion” which
`
`returned only 561 results, none of which in the first three pages were related to the CBD
`
`MD registration.
`
`

`

`In the matter of
`Registration No. 5,173,264
`
`
`
`
`
`
`
`
`
`
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` Page 5
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`21. By filing the fraudulent Response to Office Action and an Amendment
`
`to Allege Use, MM. LLC induced the USPTO to approve and grant the CBD MD
`
`Registration.
`
`
`
`22. The USPTO relied on MM, LLC’s fraudulent Response to Office
`
`Action and an Amendment to Allege Use when it accepted the Amendment to Allege
`
`Use on December 14, 2016 and agreed to approve and grant the CBD MD Registration.
`
`
`
`23. Petitioner has been damaged by the USPTO’s reliance on MM, LLC’s
`
`fraudulent declaration because the grant of the CBD MD Registration prevents
`
`Petitioner from registering its CBDMD SYNERGY and SYNERGY CBDMD trademarks
`
`for similar goods. Petitioner will be further damaged because MM, LLC will likely
`
`attempt to use the improper registration to convince purchasers, persons in the trade,
`
`and the public that goods produced by MM, LLC are associated with, endorsed by or in
`
`some other way related to or sponsored by Petitioner, to the detriment of Petitioner.
`
`
`
`24. Attached as Exhibit I is a true and correct copy of an internet search
`
`conducted by Petitioner on March 3, 2019 for ”CBDMD” which returned 72,300 results,
`
`nearly all of which in the first three pages were related to the CBDMD products offered
`
`by Petitioner.
`
`
`
`25. Attached as Exhibit J is a true and correct copy of a printout from MM,
`
`LLC’s Facebook page for the CBD MD mark showing that MM, LLC has 172 likes and
`
`177 followers. MM, LLC has no Instagram presence and no verifiable webpage using
`
`goods claimed under the CBD MD registration.
`
`

`

`In the matter of
`Registration No. 5,173,264
`
`
`
`
`
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` Page 6
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`26. Attached as Exhibit K is a true and correct copy of a printout from
`
`Petitioner’s Facebook page for the CBDMD mark showing that Petitioner has 55,965
`
`likes and 56,395 followers. Petitioner has a globally robust Instagram presence and a
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`website (cbdmd.com – Attached as Exhibit L is a true and correct copy of Petitioner’s
`
`website) with thousands of visitors per month.
`
`
`
`
`
`No Bona Fide Use of CBD MD Mark
`
`27. Registration of the CBD MD mark is barred by Section 14(1) of the
`
`Trademark Act of 1946 because there was not bona fide use of the CBD MD mark in
`
`commerce prior to the filing of the use-based application for its registration under
`
`Trademark Act § 1(a), 15 U.S.C. §1052(a).
`
`
`
`28. On information and belief, MM, LLC has never used the CBD MD
`
`mark in interstate commerce.
`
`
`
`29. All cannabinoids, including Cannabidiol (CBD) are illegal in Louisiana,
`
`and therefore MM, LLC never had a bona fide intention to use or ability to use the mark
`
`as any products containing CBD are prohibited in the State of Louisiana.
`
`
`
`30. MM, LLC originally applied for the CBD MD registration under 15
`
`U.S.C.§ 1051(b) as an intent-to-use application on February 21, 2016.
`
`
`
`31. MM, LLC submitted a false declaration to the USPTO on December
`
`14, 2016 when they filed a Combined Response to Office Action and an Amendment to
`
`

`

`In the matter of
`Registration No. 5,173,264
`
`
`Allege Use declaring that CBD MD was in use in interstate commerce as of February
`
`
`
`
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`
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`
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` Page 7
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`21, 2016.
`
`
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`32. MM, LLC knew their December 14 declaration was false because they
`
`knew that they did not use the CBD MD mark on goods outside the state of Louisiana.
`
`
`
`33. By filing the fraudulent Response to Office Action and an Amendment
`
`to Allege Use, MM. LLC induced the USPTO to approve and grant the CBD MD
`
`Registration.
`
`
`
`34. The USPTO relied on MM, LLC’s fraudulent Response to Office
`
`Action and an Amendment to Allege Use when it accepted the Amendment to Allege
`
`Use on December 14, 2016 and agreed to approve and grant the CBD MD Registration.
`
`
`
`35. Petitioner has been damaged by the USPTO’s reliance on MM, LLC’s
`
`fraudulent declaration because the grant of the CBD MD Registration prevents
`
`Petitioner from registering its CBDMD SYNERGY and SYNERGY CBDMD trademarks
`
`for similar goods. Petitioner will be further damaged because MM, LLC will likely
`
`attempt to use the improper registration to convince purchasers, persons in the trade,
`
`and the public that goods produced by MM, LLC are associated with, endorsed by or in
`
`some other way related to or sponsored by Petitioner, to the detriment of Petitioner.
`
`
`
`
`
`
`
`
`
`

`

`In the matter of
`Registration No. 5,173,264
`
`
`
`
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` Page 8
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`CBD MD Registration Likely to Cause Confusion
`
`
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`36. Registration of the CBD MD mark is barred by Section 14(1) and 2(d)
`
`of the Trademark Act of 1946 because the CBD MD Registration so resembles a mark
`
`previously used in the United States by another and not abandoned, as to be likely,
`
`when used on or in connection with the goods or services of MM, LLC, to cause
`
`confusion, or to cause mistake, or to deceive.
`
`
`
`37. MM, LLC made false representations to the U. S. Patent and
`
`Trademark Office (USPTO) regarding material facts when he signed declarations
`
`asserting ownership of the CBD MD mark.
`
`
`
`38. MM, LLC submitted a false declaration to the USPTO on December
`
`14, 2016 when they filed a Combined Response to Office Action and an Amendment to
`
`Allege Use declaring that CBD MD was in use in interstate commerce as of February
`
`21, 2016.
`
`
`
`39. MM, LLC knew their December 14 declaration was false because they
`
`knew that they did not use the CBD MD mark on goods outside the state of Louisiana.
`
`
`
`40. Attached as Exhibit H is a true and correct copy an internet search
`
`conducted by Petitioner on March 1, 2019 for “CBD MD” Louisiana cream lotion” which
`
`returned only 561 results, none of which in the first three pages were related to the CBD
`
`MD registration.
`
`

`

`In the matter of
`Registration No. 5,173,264
`
`
`
`
`
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` Page 9
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`41. By filing the fraudulent Response to Office Action and an Amendment
`
`to Allege Use, MM. LLC induced the USPTO to approve and grant the CBD MD
`
`Registration.
`
`
`
`42. The USPTO relied on MM, LLC’s fraudulent Response to Office
`
`Action and an Amendment to Allege Use when it accepted the Amendment to Allege
`
`Use on December 14, 2016 and agreed to approve and grant the CBD MD Registration.
`
`
`
`43. Petitioner has been damaged by the USPTO’s reliance on MM, LLC’s
`
`fraudulent declaration because the grant of the CBD MD Registration prevents
`
`Petitioner from registering its CBDMD SYNERGY and SYNERGY CBDMD trademarks
`
`for similar goods.
`
`
`
`44. Petitioner will be further damaged because MM, LLC will likely
`
`attempt to use the improper registration to convince purchasers, persons in the trade,
`
`and the public that goods produced by MM, LLC are associated with, endorsed by or in
`
`some other way related to or sponsored by Petitioner, to the detriment of Petitioner.
`
`
`
`45. Petitioner started selling products including topical lotions, topical
`
`creams, topical oils, medicinal lotions, medicinal creams and medicinal oils under the
`
`CBDMD mark at least as early as May 16, 2017. The CBDMD line of products has been
`
`enthusiastically received by the consuming public, generating sales in excess of $30
`
`million. The CBDMD line of products is available in retail outlets and on its website
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`located at www.cbdmd.com.
`
`

`

`In the matter of
`Registration No. 5,173,264
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` Page 10
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`46. Attached as Exhibit I is a true and correct copy of an internet search
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`“conducted by Petitioner on March 3, 2019 for ”CBDMD” which returned 72,300 results,
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`nearly all of which in the first three pages were related to the CBDMD products offered
`
`by Petitioner.
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`
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`47. MM, LLC’s CBD MD mark is confusingly similar to the CBDMD mark,
`
`the CBDMD SYNERGY mark, and the SYNERGY CBDMD mark. It is identical in aural
`
`depiction and nearly identical in visual depiction of CBDMD save for the space between
`
`CBD and MD. It is identical in aural depiction and visual depiction with the dominant
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`member of the CBDMD SYNERGY and SYNERGY CBDMD marks. The CBD MD mark
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`is similar in both connotation and commercial impression with the CBDMD and the
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`dominant member of the CBDMD SYNERGY and SYNERGY CBDMD marks due to its
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`implied and explicit meaning.
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`
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`48. The goods claimed under the CBD MD mark (skin and body topical
`
`lotions, creams and oils for cosmetic use; medicinal creams for skin care; medicinal
`
`herbal preparations; medicinal oils; herbs for medicinal purposes; all of the
`
`aforementioned containing CBD) are either identical or nearly identical to the goods
`
`being sold under the CBDMD, CBDMD SYNERGY and SYNERGY CBDMD marks.
`
`
`
`49. Attached as Exhibit L is a true and correct copy of screen shots from
`
`Petitioner’s website (www.cbdmd.com) taken by Petitioner on March 21, 2019 showing
`
`products offered by Petitioner under the CBDMD mark.
`
`

`

`In the matter of
`Registration No. 5,173,264
`
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` Page 11
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`50. The trade channels are nearly identical for goods sold under the
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`CBDMD, CBDMD SYNERGY and SYNERGY CBDMD marks and the goods claimed
`
`under the CBD MD mark. Those trade channels include both retail stores selling
`
`products which include CBD and online sales of products which include CBD.
`
`
`
`51. Petitioner advertises its CBDMD, CBDMD SYNERGY and SYNERGY
`
`CBDMD marks in national publications. Petitioner is spending significant amounts of
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`money advertising goods under the CBDMD, CBDMD SYNERGY and SYNERGY
`
`CBDMD marks on a monthly basis.
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`
`
`
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`CBD MD Registration Likely to Cause Dilution
`
`52. Registration of the CBD MD mark is barred by Section 14(1) and
`
`43(c) of the Trademark Act of 1946 because the CBD MD Registration would dilute the
`
`distinctive quality of Plaintiff’s famous mark.
`
`
`
`53. MM, LLC made false representations to the U. S. Patent and
`
`Trademark Office (USPTO) regarding material facts when he signed declarations
`
`asserting ownership of the CBD MD mark.
`
`
`
`54. MM, LLC submitted a false declaration to the USPTO on December
`
`14, 2016 when they filed a Combined Response to Office Action and an Amendment to
`
`Allege Use declaring that CBD MD was in use in interstate commerce as of February
`
`21, 2016.
`
`

`

`In the matter of
`Registration No. 5,173,264
`
`
`
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` Page 12
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`55. MM, LLC knew their December 14 declaration was false because they
`
`knew that they did not use the CBD MD mark on goods outside the state of Louisiana.
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`56. Attached as Exhibit H is a true and correct copy an internet search
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`conducted by Petitioner on March 1, 2019 for “”CBD MD” Louisiana cream lotion” which
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`returned only 561 results, none of which in the first three pages were related to the CBD
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`MD registration.
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`57. By filing the fraudulent Response to Office Action and an Amendment
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`to Allege Use, MM. LLC induced the USPTO to approve and grant the CBD MD
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`Registration.
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`58. The USPTO relied on MM, LLC’s fraudulent Response to Office
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`Action and an Amendment to Allege Use when it accepted the Amendment to Allege
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`Use on December 14, 2016 and agreed to approve and grant the CBD MD Registration.
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`59. Registration of MM, LLC’s CBD MD mark is likely to further damage
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`Petitioner due to its dilution of Petitioner’s famous mark CBDMD. Use of the CBD MD
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`mark is likely to cause dilution by blurring or dilution by tarnishment of the famous
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`CBDMD mark owned and used by Petitioner.
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`60. MM, LLC’s CBD MD mark is confusingly similar to the CBDMD mark,
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`the CBDMD SYNERGY mark, and the SYNERGY CBDMD mark. It is identical in aural
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`depiction and nearly identical in visual depiction of CBDMD save for the space between
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`CBD and MD. It is identical in aural depiction and visual depiction with the dominant
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`member of the CBDMD SYNERGY and SYNERGY CBDMD marks. The CBD MD mark
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`

`

`In the matter of
`Registration No. 5,173,264
`
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`is similar in both connotation and commercial impression with the CBDMD and the
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` Page 13
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`dominant member of the CBDMD SYNERGY and SYNERGY CBDMD marks due to its
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`implied and explicit meaning.
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`61. Petitioner started selling products including topical lotions, topical
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`creams, topical oils, medicinal lotions, medicinal creams and medicinal oils under the
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`CBDMD mark at least as early as May 16, 2017.
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`62. Petitioner has sold goods under the CBDMD mark in all fifty states on
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`or prior to January of 2018.
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`63. Petitioner has been the highest-level sponsor at numerous large
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`events attended by thousands of participants interested in viewing, purchasing and
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`using products sold by Petitioner under the CBDMD, CBDMD SYNERGY and
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`SYNERGY CBDMD marks.
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`
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`64. Petitioner’s CBDMD mark is well know in the CBD industry as
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`evidenced by Exhibit I which illustrates the pervasive nature of the CBDMD mark and its
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`recognition within the industry.
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`
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`65. MM, LLC claims to be using its mark in commerce as of January
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`2018.
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`66. Petitioner will be further damaged because MM, LLC will likely
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`attempt to use the improper registration to convince purchasers, persons in the trade,
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`and the public that goods produced by MM, LLC are associated with, endorsed by or in
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`

`

`In the matter of
`Registration No. 5,173,264
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`some other way related to or sponsored by Petitioner, resulting in dilution of Petitioner’s
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` Page 14
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`mark by blurring or tarnishment.
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`CBD MD Registration Is Merely Descriptive
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`67. Registration of the CBD MD mark is barred by Sections 14(1) and
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`2(e) of the Trademark Act of 1946 because the CBD MD Registration consists of a mark
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`which, when used on or in connection with the goods of the applicant is merely
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`descriptive or deceptively misdescriptive of them.
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`
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`68. MM, LLC made false representations to the U. S. Patent and
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`Trademark Office (USPTO) regarding material facts when he signed declarations
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`asserting ownership of the CBD MD mark.
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`
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`69. MM, LLC submitted a false declaration to the USPTO on December
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`14, 2016 when they filed a Combined Response to Office Action and an Amendment to
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`Allege Use declaring that CBD MD was in use in interstate commerce as of February
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`21, 2016.
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`
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`70. MM, LLC knew their December 14 declaration was false because they
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`knew that they did not use the CBD MD mark on goods outside the state of Louisiana.
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`
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`71. Attached as Exhibit H is a true and correct copy an internet search
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`conducted by Petitioner on March 1, 2019 for “CBD MD” Louisiana cream lotion” which
`
`returned only 561 results, none of which in the first three pages were related to the CBD
`
`MD registration.
`
`

`

`In the matter of
`Registration No. 5,173,264
`
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` Page 15
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`72. By filing the fraudulent Response to Office Action and an Amendment
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`to Allege Use, MM. LLC induced the USPTO to approve and grant the CBD MD
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`Registration.
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`
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`73. The USPTO relied on MM, LLC’s fraudulent Response to Office
`
`Action and an Amendment to Allege Use when it accepted the Amendment to Allege
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`Use on December 14, 2016 and agreed to approve and grant the CBD MD Registration.
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`
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`74. Petitioner has been damaged by the USPTO’s reliance on MM, LLC’s
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`fraudulent declaration because the grant of the CBD MD Registration prevents
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`Petitioner from registering its CBDMD SYNERGY and SYNERGY CBDMD trademarks
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`for similar goods.
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`
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`75. A mark is merely descriptive under Trademark Act §2(e)(1), 15 U.S.C.
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`§1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature,
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`purpose or use of the relevant goods and/or services. See In re Gyulay, 820 F.2d 1216,
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`3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229
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`USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); and In re
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`Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
`
`
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`76. The determination of whether a mark is merely descriptive must be
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`made in relation to the identified goods and/or services, and not in the abstract. In re
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`Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); and In re
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`Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). It is not
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`necessary that a term describe all of the purposes, functions, characteristics or features
`
`

`

`In the matter of
`Registration No. 5,173,264
`
`
`of the goods and/or services. It is enough if the term describes one significant attribute
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` Page 16
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`of the goods and/or services. In re H.U.D.D.L.E, 216 USPQ 358 (TTAB 1982); and In re
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`MBAssociates, 180 USPQ 338 (TTAB 1973).
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`
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`77. The CBD MD registration includes Class 003 for skin and body topical
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`lotions, creams and oils for cosmetic use; all of the aforementioned containing CBD,
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`and Class 005 for medicinal creams for skin care; medicinal herbal preparations;
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`medicinal oils; herbs for medicinal purposes; all of the aforementioned containing CBD.
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`
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`78. CBD, an abbreviation for cannabidiol, is a naturally occurring
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`compound found in the resinous flower of cannabis, a plant with a history as a medicine
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`going back thousands of years. Today the therapeutic properties of CBD are being
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`tested and confirmed by scientists and doctors around the world. CBD clearly describes
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`an ingredient in the goods listed under the CBD MD registration. CBD is disclaimed
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`from the CBD MD registration as being descriptive. Attached as Exhibit M is a true and
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`correct copy of nine examples of United States trademark registrations in which “CBD”
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`is disclaimed from the application as being descriptive.
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`
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`79. The CBD MD registration includes goods described as “medicinal
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`creams for skin care; medicinal herbal preparations; medicinal oils; herbs for medicinal
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`purposes” and are clearly marketed as a means to improve a user’s health. MD is an
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`abbreviation for the Latin title Medicinae Doctor, Doctor of Medicine. The use of MD on
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`goods or services implies that the good or service is formulated or designed to improve
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`the user’s health. The combination of CBD and MD clearly describes a quality within the
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`

`

`In the matter of
`Registration No. 5,173,264
`
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`goods listed under the CBD MD registration as they are formulated or designed to
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` Page 17
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`improve the user’s health. Attached as Exhibit N is a true and correct copy of twelve
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`examples of United States trademark registrations in which “MD” is disclaimed from the
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`application as being descriptive.
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`
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`CBD MD Registration Is Unlawful Under Federal Law
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`
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`80. Registration of the CBD MD mark is barred by Sections 1 and 45 of
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`the Trademark Act of 1946 because there is an absence of a bona fide intent to use
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`lawfully use the mark in commerce.
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`
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`81. Use of a mark in commerce must be lawful use to be the basis for
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`federal registration of the mark. Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3
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`USPQ2d 1306, 1308 (Fed. Cir. 1987); see 15 U.S.C. §§1051, 1127; 37 C.F.R. §2.69; In
`
`re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993); In re Stellar
`
`Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968). Thus, the goods or services to which the
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`mark is applied, and the mark itself, must comply with all applicable federal laws. See In
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`re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976) ("In order for [an] application
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`to have a valid basis that could properly result in a registration, the use of the mark [has]
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`to be lawful, i.e., the sale or shipment of the product under the mark [has] to comply with
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`all applicable laws and regulations. If this test is not met, the use of the mark fails to
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`create any rights that can be recognized by a Federal registration."). In addition, "the
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`fact that the provision of a product or service may be lawful within a state is irrelevant to
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`

`

`In the matter of
`Registration No. 5,173,264
`
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`the question of federal registration when it is unlawful under federal law." In re Brown,
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` Page 18
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`119 USPQ2d 1350, 1351 (TTAB 2016).
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`
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`82. If the record in an application based on Trademark Act Section 1(a)
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`indicates that the mark itself or the identified goods or services violate federal law,
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`registration must be refused under Trademark Act Sections 1 and 45, based on the
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`absence of lawful use of the mark in commerce. See 15 U.S.C. §§1051, 1127; 37
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`C.F.R. §2.69; In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968).
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`
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`83. For applications based on Trademark Act Section 1(b), 44, or 66(a), if
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`the record indicates that the mark or the identified goods or services are unlawful, actual
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`lawful use in commerce is not possible. See In re PharmaCann LLC., 123 USPQ2d
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`1122, 1124 (TTAB June 16, 2017); In re JJ206, LLC, 120 USPQ2d 1568, 1569 (TTAB
`
`2016); John W. Carson Found. v. Toilets.com, Inc., 94 USPQ2d 1942, 1948 (TTAB
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`2010). Thus, a refusal under Trademark Act Sections 1 and 45 is also appropriate for
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`these non-use-based applications, because the applicant does not have a bona fide
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`intent to lawfully use the mark in commerce. See 15 U.S.C. §§1051, 1127; In re
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`PharmaCann LLC, 123 USPQ2d at 1124; In re JJ206, LLC,120 USPQ2d at 1569; John
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`W. Carson Found., 94 USPQ2d at 1948.
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`
`
`84. CBD, an abbreviation for cannabidiol, is a naturally occurring
`
`compound

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