Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1030300
`
`Filing date:
`
`01/21/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92071109
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`CBDMD, LLC
`
`BLAKE E VANDE GARDE
`ERICKSON KERNELL IP
`8900 STATE LINE ROAD, SUITE 500
`LEAWOOD, KS 66206
`UNITED STATES
`ekdkdocket@kcpatentlaw.com, bvg@kcpatentlaw.com,
`debbied@kcpatentlaw.com
`913-549-4700
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Other Motions/Papers
`
`Richard J. Oparil
`
`Richard.Oparil@AGG.com
`
`/Richard J. Oparil/
`
`01/21/2020
`
`CBDMD_POA.pdf(59125 bytes )
`Replead_Petition_for_Cancellation.pdf(2474737 bytes )
`
`

`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`CBDMD, LLC,
`
`Petitioner,
`
`VS.
`
`VVVVVVVVVVV
`
`MAJIK MEDECINE, LLC,
`
`Respondent.
`
`Cancellation No.: 92071 109
`
`Registration No.: 5,173,264
`Mark: CBD MD
`
`Registration Date: March 28, 2017
`
`REVOCATION OF POWER OF ATTORNEY AND
`
`APPOINTMENT OF NEW POWER OF ATTORNEY
`
`CBDMD, LLC ("Petitioner"), a North Carolina limited liability company having a
`
`principal place of business at 4521 Sharon Road, Suite 450, Charlotte, NC 28211, hereby revokes
`
`all prior Powers of Attorney previously given to prosecute the same and hereby appoints the
`
`following attorneys with full power of substitution and revocation to prosecute the same, and to
`
`receive all correspondence from and transact all business in the Patent and Trademark Office before
`
`the Trademark Trial and Appeal Board connected therewith:
`
`
`Name
`Member of the Bar in Bar License Number Date of Admission
`
`State of
`.
`Richard J. Oparil
`DC
`409723
`April 17, 1987
`
`NY
`2034684
`May 7. 1986
`
`
`
`
`
`
`Caroline C. Maxwell
`
`Texas
`
`Scott A. M. Chambers, DC
`PhD
`VA
`
`24055341
`
`450442
`36583
`
`November 3, 2006
`
`May 3, 1996
`October 15. 1993
`
`14564592v1
`
`

`

`Cancellation No.: 92071109
`
`The correspondence address of the foregoing attorneys is:
`
`Arnall Golden Gregory LLP
`
`1775 Pennsylvania Avenue NW, Suite 1000
`
`Washington, DC 20006
`
`Telephone: (202) 677-4030
`
`E-mail: Richard.Oparil@AGG.com; Caroline.Maxwell@agg.com
`
`
`
`Date:
`
`l’zl'ZO
`
`14564592V1
`
`

`

`
`
`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. 92071109
`
`
`
`
`
`AMENDED 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, repleads its
`
`April 16, 2019 Petition for Cancellation based on the invitation set forth in the December 30, 2019
`
`Order of the Trademark Trial and Appeal Board (TTAB) (hereinafter, “Order”). Petitioner 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 Cannabidiol (“CBD”), and 005 for
`
`medicinal creams for skin care; medicinal herbal preparations; medicinal oils; herbs for medicinal
`
`purposes; all of the aforementioned containing CBD. In the Order, the TTAB indicated that in the
`
`absence of Petitioner repleading the cancellation would proceed solely on the grounds of failure
`
`to function as a mark and lack of a bone fide intention to lawfully use the mark. Order at 14.
`
`Petitioner hereby amends its petition to cancel the CBD MD Registration.
`
`As grounds of cancellation, it is alleged that:
`
`14544311v7
`
`

`

`In the Matter of
`Registration No. 5,173,264
`
`
`A,
`
`Registrant
`
`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.
`
`3.
`
`Christy Peachey (“Peachey”) is an individual who, on information and belief,
`
`resides at 312 Independence Dr., Mandeville, Louisiana, 70471.
`
`4.
`
`MAJIK MEDICINE, LLC (“MM, LLC” or “Registrant”) is a 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. As of April 5, 2019, MM, LLC was not in good standing for
`
`failing to file an annual report with the Louisiana Secretary of State. See Exhibit B.
`
`7.
`
`On February 21, 2016, MM, LLC 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.
`
`
`14544311v7
`
`2
`
`

`

`In the Matter of
`Registration No. 5,173,264
`
`
`
`8.
`
`On June 14, 2016, an Office Action was issued for the CBD MD application. On
`
`December 14, 2016, a Response to Office Action was filed for the CBD MD application. Attached
`
`as Exhibit C is a true and correct copy of the Response to Office Action taken from the TSDR
`
`database.
`
`9.
`
`On December 14, 2016, an Amendment was made to the registration application
`
`cancelling Class 35 and amending the description of Class 003 and 005 to specify that “all of the
`
`aforementioned [materials] containing CBD.” Accordingly, all of the products described for the
`
`mark contain CBD, but the descriptions do not indicate the level of tetrahydrocannabinol (“THC”).
`
`Exhibit D.
`
`10.
`
`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 D is a true and correct copy of the Amendment to Allege Use taken from the
`
`TSDR database.
`
`11. 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 by
`
`declaring that CBD MD was in use in commerce as of February 21, 2016.
`
`12.
`
`On information and belief, MM, LLC abandoned or never legally used the CBD
`
`MD mark in commerce.
`
`B.
`
`Petitioner
`
`13.
`
`Petitioner is likely to be damaged by the registration and it has standing to bring
`
`this Petition. As set forth below, the subject mark is descriptive and that Petitioner and Registrant
`
`are competitors. Order at 3. In addition, Petitioner has applied for several registered trademarks
`
`
`14544311v7
`
`3
`
`

`

`In the Matter of
`Registration No. 5,173,264
`
`
`that the CBD MD mark could block. The mark is also likely to cause confusion as to the source,
`
`quality and legal status of CBD products sold by MM, LLC and CBDMD.
`
`14.
`
`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 interstate commerce at retail outlets and on its website located at www.cbdmd.com.
`
`Petitioner has been the highest-level sponsor at numerous large events attended by thousands of
`
`participants interested in viewing, purchasing and using its products. Petitioner’s CBDMD mark
`
`is well known and recognized. See Exhibit H.
`
`15.
`
`Unless MM, LLC can show first lawful use, which they have not yet done,
`
`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.
`
`16.
`
`On December 20, 2018, Petitioner applied to register its CBDMD SYNERGY
`
`mark, U.S. Serial No. 87613823. The USPTO issued a non-final office action on December 19,
`
`2019.
`
`17.
`
`On December 20, 2018, Petitioner applied to register its SYNERGY CBDMD
`
`mark, U.S. Serial No. 87613850. The USPTO issued a non-final office action on December 19,
`
`2019.
`
`18.
`
`On May 29, 2019, Petitioner applied to register its CBDMD mark, U.S. Serial No.
`
`88451429. On June 30, 2019, the application was assigned to an Examiner.
`
`
`14544311v7
`
`4
`
`

`

`In the Matter of
`Registration No. 5,173,264
`
`
`
`19.
`
`On May 29, 2019, Petitioner applied to register its CBDMD mark, U.S. Serial No.
`
`88451502. On June 30, 2019, the application was assigned to an Examiner.
`
`20.
`
`On May 29, 2019, Petitioner applied to register its CBDMD PREMIUM mark, U.S.
`
`Serial No. 88451595. On June 30, 2019, the application was assigned to an Examiner.
`
`21.
`
`On May 29, 2019, Petitioner applied to register its CBDMD PREMIUM CBD OIL
`
`mark, U.S. Serial No. 88451556. On June 30, 2019, the application was assigned to an Examiner.
`
`Lack of Use or Intention to Use the Mark
`
`22.
`
`The foregoing allegations are incorporated here by reference.
`
`23. MM, LLC’s assertion of first use of February 21, 2016 is false because there could
`
`not have been a bona fide intention to legally use or a bona fide use of the mark at issue. See 15
`
`U.S.C. §§ 1051(b), 1127; 37 C.F.R. § 2.69.
`
`24.
`
`To qualify for federal registration, the use of a mark in commerce must be
`
`lawful. Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir.
`
`1987) (“A valid application cannot be filed at all for registration of a mark without ‘lawful use in
`
`commerce’”); John W. Carson Found. v. Toilets.com, Inc., 94 USPQ2d 1942 (2010) (TTAB 2010)
`
`(it was not a lawful use in commerce to use a mark in violation of a court injunction based on a
`
`state law claim); In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); Coahoma Chemical
`
`Co., Inc. v. Smith, 113 USPQ 413 (Com’r Pat. & Trademarks 1957) (the “use of a mark in
`
`connection with unlawful shipments in interstate commerce is not use of a mark in commerce
`
`which the [USPTO] may recognize.”); TMEP § 907. The goods to which the mark will be applied
`
`must comply with all applicable federal laws. See In re Brown, 119 USPQ2d 1350, 1351 (TTAB
`
`2016) (citing In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993) (“It is
`
`settled that the Trademark Act’s requirement of ‘use in commerce,’ means a ‘lawful use in
`
`
`14544311v7
`
`5
`
`

`

`In the Matter of
`Registration No. 5,173,264
`
`
`commerce’”)); In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976) ("In order for [an]
`
`application to have a valid basis that could properly result in a registration, the use of the mark
`
`[has] to be lawful, i.e., the sale or shipment of the product under the mark [has] to comply with all
`
`applicable laws and regulations. If this test is not met, the use of the mark fails to create any rights
`
`that can be recognized by a Federal registration."). And “[w]hen the sale or transportation of any
`
`product for which registration of a trademark is sought is regulated under an Act of Congress, the
`
`[USPTO] may make appropriate inquiry as to compliance with such Act for the sole purpose of
`
`determining lawfulness of the commerce recited in the application.” 37 C.F.R. § 2.69.
`
`25.
`
`If the record in an application based on Trademark Act Section 1(a) indicates that
`
`the mark itself or the identified goods or services violate federal law, registration must be refused
`
`under Trademark Act Sections 1 and 45, based on the absence of lawful use of the mark in
`
`commerce. See 15 U.S.C. §§ 1051, 1127; 37 C.F.R. § 2.69; In re Stellar Int’l, Inc., 159 USPQ 48,
`
`50-51 (TTAB 1968).
`
`26.
`
`For applications based on Trademark Act Section 1(b), 44, or 66(a), if the record
`
`indicates that the mark or the identified goods or services are unlawful, actual lawful use in
`
`commerce is not possible. See In re PharmaCann LLC, 123 USPQ2d 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 2010). Thus, a refusal under Trademark Act
`
`Sections 1 and 45 is also appropriate for these non-use-based applications, because the applicant
`
`does not have a bona fide intent to lawfully use the mark in commerce. See 15 U.S.C. §§1051,
`
`1127; In re PharmaCann LLC, 123 USPQ2d at 1124; In re JJ206, LLC, 120 USPQ2d at 1569;
`
`John W. Carson Found., 94 USPQ2d at 1948.
`
`
`14544311v7
`
`6
`
`

`

`In the Matter of
`Registration No. 5,173,264
`
`
`
`27.
`
`The CBD MD registration includes Class 003 for skin and body topical lotions,
`
`creams and oils for cosmetic use; all of the aforementioned containing CBD, and Class 005 for
`
`medicinal creams for skin care; medicinal herbal preparations; medicinal oils; herbs for medicinal
`
`purposes; all of the aforementioned containing CBD.
`
`A.
`
`Controlled Substances Act/Louisiana Law
`
`28.
`
`The products covered by the CBD MD registration were illegal under federal law.
`
`“[W]here the identified goods are illegal under the federal Controlled Substances Act (CSA), the
`
`applicant cannot use its mark in lawful commerce, and ‘it is a legal impossibility’ for the applicant
`
`to have the requisite bona fide intent to use the mark.” In re JJ206, LLC, 120 USPQ2d 1568, 1569
`
`(TTAB 2016).
`
`29.
`
`This case pertains to CBD, an abbreviation for cannabidiol, is a naturally occurring
`
`compound found in the resinous flower of cannabis, a plant with a history as a medicine going
`
`back thousands of years. Today the therapeutic properties of CBD are being tested and confirmed
`
`by scientists and doctors around the world. MD is an abbreviation for the Latin title Medicinae
`
`Doctor, Doctor of Medicine. The use of MD on goods or services implies that the good or service
`
`is formulated or designed to improve the user’s health. The combination of CBD and MD generally
`
`describes a quality within the goods listed under the CBD MD registration as they are formulated
`
`or designed to improve the user’s health. The combined terms of CBD and MD signify cannabidiol
`
`for some medical use.
`
`30.
`
`CBD, an abbreviation for cannabidiol, is a naturally occurring compound found in
`
`the resinous flower of cannabis. At the time of filing, the CSA prohibited the manufacturing,
`
`distributing, dispensing, or possessing certain controlled substances, including marijuana and
`
`marijuana-based preparations. 21 U.S.C. §§ 812, 841(a)(1), 844(a); see also 21 U.S.C. § 802(16)
`
`
`14544311v7
`
`7
`
`

`

`In the Matter of
`Registration No. 5,173,264
`
`
`(defining marijuana). The Drug Enforcement Administration (DEA) interpreted the CSA and DEA
`
`regulations to declare any product that contains any amount of tetrahydrocannabinols (THC) to be
`
`a schedule I controlled substance, even if such product is made from portions of the cannabis plant
`
`that are excluded from the CSA definition of marihuana and that the listing of THC in schedule I
`
`refers to both natural and synthetic THC. 66 Fed. Reg. 51529 (Oct. 9, 2001).
`
`31.
`
`In December 2016, DEA issued guidance on the definition of marijuana and
`
`extracts from marijuana which can include CBD under new Schedule I Drug Code 7350, which is
`
`called “marijuana extract.” The new 7350 Drug Code has been interpreted by the DEA as including
`
`extracts comprised of cannabinoids from cannabis plants including CBD, thus making CBD illegal
`
`at the federal level.
`
`32.
`
`On December 2, 2018, the Agriculture Improvement Act of 2018, commonly
`
`known as the Farm Bill, was signed into law, amending the Agriculture Marketing Act of 1946
`
`(AMA) to remove “hemp” from the CSA’s definition of marijuana. See Pub. L. No. 115-334 (Dec.
`
`20, 2018); 21 U.S.C. §§ 801-971.
`
`33.
`
`The USPTO has instructed that trademark applications that identify goods
`
`encompassing CBD filed after that date may be allowed if goods are derived from “hemp.”
`
`Examination Guide 1-19: Examination of Marks for Cannabis and Cannabis-Related Goods and
`
`Services after Enactment of the 2018 Farm Bill (May 2, 2019).
`
`34.
`
`The USPTO has indicated that a determination of whether commerce involving
`
`cannabis and cannabis-related goods and services is lawful requires consultation of several
`
`different sources, including the CSA, 21 U.S.C. § 801 et seq., the Federal Food Drug and Cosmetic
`
`Act (“FDCA”), 21 U.S.C. § 301 et seq., and the Agriculture Improvement Act of 2018, Pub. L.
`
`115-334 (the 2018 Farm Bill), which amends the Agricultural Marketing Act of 1946 (AMA).
`
`
`14544311v7
`
`8
`
`

`

`In the Matter of
`Registration No. 5,173,264
`
`
`
`35.
`
`The USPTO instructed that for applications filed on or after December 20, 2018
`
`that identify goods encompassing cannabis or CBD, the 2018 Farm Bill could potentially remove
`
`the CSA as a ground for refusal of registration, but only if the goods are derived from “hemp.” If
`
`an applicant’s goods are derived from “hemp” as defined in the 2018 Farm Bill, the USPTO
`
`instructed applicants that the identification of goods must specify that they contain less than 0.3%
`
`THC. Thus, the scope of the resulting registration would be limited to goods compliant with federal
`
`law.
`
`36.
`
`Registrant’s identification of goods after the December 14, 2016 Amendment was
`
`made does not indicate the CBD used in its products contain less than 0.3% THC.
`
`37.
`
`The USPTO instructed that for applications filed before December 20, 2018 that
`
`identify goods encompassing CBD or other cannabis products, registration will be refused due to
`
`the unlawful use or lack of bona fide intent to use in lawful commerce under the CSA. Such
`
`applications did not have a valid basis to support registration at the time of filing because,
`
`according to the USPTO, the goods violated federal law.
`
`38.
`
`Further, at the alleged date of first use, February 21, 2016, all cannabinoids,
`
`including CBD were illegal in Louisiana. That law was not changed until 2019. See, e.g., La. Rev.
`
`Stat. 40:964; La. Act No. 164 (June 6, 2019); Exhibit E (La, Bd. of Pharmacy Guidance Document
`
`re Cannabidol (CBD) Oil (Nov. 14, 2018) (CBD Oil is not illegal under federal or state law));
`
`Exhibit F. As of February 21, 2016, it was not lawful to market CBD containing materials in
`
`Louisiana, where MM, LLC is registered, or in interstate commerce. Accordingly, any commerce
`
`of the MM, LLC products – all of which contain CBD – would have been unlawful. See Exhibit E
`
`at no. 3 (“Louisiana law does not make a distinction between CBD extracted from hemp and CBD
`
`extracted from marijuana” and CBD is not legal in Louisiana).
`
`
`14544311v7
`
`9
`
`

`

`In the Matter of
`Registration No. 5,173,264
`
`
`B.
`
`Food, Drug and Cosmetic Act
`
`39.
`
`The FDCA prohibits the introduction or delivery for introduction into interstate
`
`commerce of a food to which has been added a drug or a biological product for which substantial
`
`clinical investigations have been instituted and for which the existence of such investigations has
`
`been made public. 21 U.S.C. § 331(ll); see also 21 U.S.C. § 321(ff) (indicating that a dietary
`
`supplement is deemed to be a food within the meaning of the Federal Food, Drug and Cosmetic
`
`Act). The Food and Drug Administration (“FDA”) has determined that substantial clinical
`
`investigations of cannabidiol have begun and thus products containing cannabidiol may not be
`
`sold as dietary supplements. See FDA and Marijuana: Questions and Answers, available at
`
`http://www.fda.gov/newsevents/publichealthfocus/ucm421168.htm#dietarysuppl.
`
`40.
`
`An article that has been authorized for investigation as a new drug or as a biologic
`
`before being marketed as a food or as a dietary supplement cannot be marketed as a dietary
`
`supplement if substantial clinical investigations of the article have begun and the existence of such
`
`investigations has been made public. Draft Guidance for Industry: Dietary Supplements: New
`
`Dietary
`
`Ingredient Notifications
`
`and Related
`
`Issues
`
`(Aug. 2016),
`
`available
`
`at
`
`https://www.fda.gov/media/99538/download.
`
`41.
`
`The CBD MD registration includes goods described as “medicinal herbal
`
`preparations; medicinal oils; herbs for medicinal purposes.” Each of these goods could be
`
`formulated as edible by MM, LLC, thus being in violation of the FDCA. While MM, LLC argued
`
`to the Examiner that it products were lawful under the CSA, it made no such argument as to the
`
`FDCA.
`
`42.
`
`The FDA also takes the position that it is unlawful to introduce food or beverages
`
`containing added CBD into interstate commerce or to market CBD as, or in, dietary supplements,
`
`
`14544311v7
`
`10
`
`

`

`In the Matter of
`Registration No. 5,173,264
`
`
`regardless of whether the substances are hemp-derived. See Statement from FDA Commissioner
`
`Scott Gottlieb, M.D., on signing of the Agriculture Improvement Act and the agency’s regulation
`
`of
`
`products
`
`containing
`
`cannabis
`
`and
`
`cannabis-derived
`
`compounds
`
`(https://www.fda.gov/NewsEvents/Newsroom/PressAnnouncements/ucm628988.htm).
`
`43.
`
`In addition, an unapproved new drug cannot be distributed or sold in interstate
`
`commerce unless it is the subject of an FDA-approved new drug application (NDA) or abbreviated
`
`new drug application (ANDA). 21 U.S.C. §§ 331(d) and 355(a), (b), & (j); FDA Regulation of
`
`Cannabis and Cannabis-Derived Products: Questions and Answers (https://www.fda.gov/news-
`
`events/public-health-focus/fda-regulation-cannabis-and-cannabis-derived-products-including-
`
`cannabidiol-cbd#qandas). MM, LLC’s products are comprised of cannabidiol and are promoted to
`
`have therapeutic or medical benefits that affect the structure or function of the body. See Exhibit
`
`C.
`
`44.
`
`The FDA takes the position that a company cannot legally market any CBD product
`
`as a dietary supplement under the FDCA. The FDA has issued dozens of warning letters to CBD
`
`companies. See, e.g., Scientific Data and Information About Products Containing Cannabis or
`
`Cannabis-Derived Compounds, 84 Fed. Reg. 12969 (Apr. 3, 2019); FDA News Release, FDA
`
`warns 15 companies for illegally selling various products containing cannabidiol as agency
`
`details
`
`safety
`
`concerns
`
`(Nov.
`
`25,
`
`2019)
`
`(https://www.fda.gov/news-events/press-
`
`announcements/fda-warns-15-companies-illegally-selling-various-products-containing-
`
`cannabidiol-agency-details).
`
`45.
`
`The USPTO has also indicated that registration of marks for foods, beverages,
`
`dietary supplements, or pet treats containing CBD will still be refused as unlawful under the
`
`FDCA, even if derived from hemp, as such goods may not be introduced lawfully into interstate
`
`
`14544311v7
`
`11
`
`

`

`In the Matter of
`Registration No. 5,173,264
`
`
`commerce. 21 U.S.C. § 331(ll). Registrant has not indicated how its goods were introduced
`
`lawfully into interstate commerce.
`
`46.
`
`MM. LLC’s declaration that the first use in commerce was February 21, 2016, was
`
`intended to support the grant of the trademark registration, and the declaration was material
`
`because it was necessary to support the grant of the registration of CBD MD.
`
`47.
`
`In MM, LLC’s July 3, 2019 Motion to Dismiss (“Motion”), Registrant argued that
`
`“[a]t the time of the subject declaration the registrant had used the subject mark both inside and
`
`outside the state of Louisiana, with all usage believed to be legal at state and federal levels.”
`
`(Motion at 15). It is unclear from the wording chosen by MM, LLC whether MM, LLC is referring
`
`to the time the subject declaration was signed (December 14, 2016) or the time of asserted first use
`
`(February 21, 2016); however, either date would appear to be incorrect regarding, at least, that the
`
`usage was legal at federal and state levels. While the Motion asserts use in other states, it does not
`
`identify any states other than Louisiana sales occurred in by February 21, 2016.
`
`48.
`
`MM, LLC does not describe where the subject material of the February 21, 2016
`
`was manufactured, which would affect whether the goods were lawfully produced and lawful.
`
`49. While MM, LLC asserts in the Motion that “all usage believed to be legal at state
`
`and federal levels” (Motion at 15), MM, LLC does not indicate how all usage in February 21, 2016
`
`could have been legal on that date. MM, LLC instead suggests that the sale and usage might
`
`become legal in the future as “state agencies are awaiting clarification.” Motion at 17-18. This
`
`case, however, concerns the lawfulness of sales on the asserted first use of February 21, 2016, not
`
`some indefinite future date.
`
`50.
`
`For applications that recite services involving the cultivation or production of
`
`cannabis that is “hemp” within the meaning of the 2018 Farm Bill, Applicants are required to
`
`
`14544311v7
`
`12
`
`

`

`In the Matter of
`Registration No. 5,173,264
`
`
`provide additional statements for the Record to confirm that their activities met the requirements
`
`of the 2018 Farm Bill with respect to the production of hemp. The 2018 Farm Bill requires hemp
`
`to be produced under license or authorization by a state, territory, or tribal government in
`
`accordance with a plan approved by the U.S. Department of Agriculture (USDA) for the
`
`commercial production of hemp. According to the USPTO guidance of May 2, 2019, the USDA
`
`has not promulgated regulations, created its own hemp-production plan, or approved any state or
`
`tribal hemp-production plans. Thus, it is unclear how Registrant could have availed itself of these
`
`regulations to make a lawful sale on February 21, 2016. The 2018 Farm Bill permits states, tribes,
`
`and institutions of higher education to continue operating under authorities of the 2014 Farm Bill
`
`until 12 months after the USDA establishes the plan and regulations required under the 2018 Farm
`
`Bill. The Registrant did not provide the necessary specificity to confirm their activities met the
`
`requirements of the 2018 Farm Bill or the USDA promulgated regulations for sales on February
`
`21, 2016 or sales at any time.
`
`51.
`
`Because MM, LLC never lawfully used the CBD MD mark in commerce, yet they
`
`filed amendments and declarations at the USPTO claiming use of the mark in commerce, they
`
`falsely obtained and maintained the CBD MD Registration.
`
`52.
`
`MM, LLC has not taken any steps to commence legal use of the mark CBD MD in
`
`interstate commerce, either before or after the filing date of the application.
`
`53.
`
`Attached as Exhibit G 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.
`
`54.
`
`Petitioner has been damaged by the USPTO’s reliance on MM, LLC’s false
`
`declaration because the grant of the CBD MD Registration prevents Petitioner from registering its
`
`
`14544311v7
`
`13
`
`

`

`In the Matter of
`Registration No. 5,173,264
`
`
`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.
`
`55. Wherefore, the subject mark should be cancelled.
`
`CBD MD Fails to Function as a Mark
`
`56.
`
`The foregoing allegations are incorporated here by reference.
`
`57.
`
`Registration of the CBD MD mark is barred by Sections 14(1) and 2(e) of the
`
`Trademark Act of 1946 because the CBD MD Registration consists of a mark which, when used
`
`on or in connection with the goods of the applicant is merely descriptive or deceptively
`
`misdescriptive of them.
`
`58.
`
`The CBD MD registration includes Class 003 for skin and body topical lotions,
`
`creams and oils for cosmetic use; all of the aforementioned containing CBD, and Class 005 for
`
`medicinal creams for skin care; medicinal herbal preparations; medicinal oils; herbs for medicinal
`
`purposes; all of the aforementioned containing CBD.
`
`59.
`
`MM, LLC made false representations to the USPTO regarding material facts when
`
`he signed declarations asserting ownership of the CBD MD mark.
`
`60.
`
`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.
`
`
`14544311v7
`
`14
`
`

`

`In the Matter of
`Registration No. 5,173,264
`
`
`
`61.
`
`MM, LLC is one source of goods bearing the descriptive phrase CBD MD. MM,
`
`LLC is not, however, the only source of such goods as other vendors of products containing CBD
`
`sell goods bearing the phrase “CBD MD” which did not come from MM, LLC.
`
`62.
`
`The phrase “CBD MD” is widely used as descriptive phrase for products containing
`
`CBD including skin and body topical lotions, creams and oils for cosmetic use and for medicinal
`
`creams for skin care, medicinal herbal preparations, medicinal oils, and herbs for medicinal
`
`purposes. The phrase CBD MD is a commonly used descriptive phrase that connotes information
`
`on products which include CBD as an ingredient. It is of unknown origin and has been used on
`
`many kinds of goods that do not original from MM, LLC.
`
`63.
`
`MM, LLC’s CBD MD mark is incapable of distinguishing the goods of MM, LLC
`
`from the goods of others and therefore cannot function as a trademark and an indicator of source.
`
`64.
`
`A mark is merely descriptive under Trademark Act § 2(e)(1), 15 U.S.C. §
`
`1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of
`
`the relevant goods or services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);
`
`In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc.,
`
`223 USPQ 88 (TTAB 1984); and In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
`
`65.
`
`The determination of whether a mark is merely descriptive must be made in relation
`
`to the identified goods or services, and not in the abstract. In re Omaha National Corp., 819 F.2d
`
`1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ
`
`215 (CCPA 1978). It is not necessary that a term describe all of the purposes, functions,
`
`characteristics or features of the goods or services. It is enough if the term describes one significant
`
`attribute of the goods or services. In re H.U.D.D.L.E, 216 USPQ 358 (TTAB 1982); In re
`
`MBAssociates, 180 USPQ 338 (TTAB 1973). CBD MD does not act as a mark.
`
`
`14544311v7
`
`15
`
`

`

`In the Matter of
`Registration No. 5,173,264
`
`
`
`WHEREFORE, Petitioner requests that U. S. Reg. No. 5,173,264 be cancelled and that this
`
`Petition for Cancellation be sustained in favor of Petitioner.
`
`The fee required in 37 CFR § 2.6(a) is submitted herewith.
`
`Dated: January 21, 2020
`
`
`
`
`
`Respectfully submitted,
`
`/Richard J. Oparil/
`Scott A.M. Chambers, Ph.D.
`Richard J. Oparil
`Kevin M. Bell
`Caroline M. Maxwell
`ARNALL GOLDEN GREGORY LLP
`1775 Pennsylvania Ave. NW, Suite 1000
`Washington, DC 20006
`(202) 677-4030
`
`
`
`
`
`
`
`
`14544311v7
`
`16
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`CBDMD, LLC,
`
`
`
`
`
`
`Petitioner,
`
`
`
`
`vs.
`
`
`
`
`
`
`
`MAJIK MEDECINE, LLC,
`
`
`
`
`
`
`Respondent.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Cancellation No.: 92071109
`Registration No.: 5,173,264
`Mark: CBD MD
`Registration Date: March 28, 2017
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby