On September 11, 2019, Dream Crew Company, owned by Toronto native Drake, applied to the United States Patent and Trademark Office (USPTO) seeking to trademark a red stop sign displaying a cannabis leaf and the letters THC. Tetrahydrocannabinol, often referred to as THC, is a principal psychoactive constituent of cannabis. The USPTO trademark application claims the red, white, and black colours as features of the mark. The mark has been applied for to be used in association with herbs for medicinal purposes, raw herbs, herbs for smoking, as well as boots, coats, dresses and various other clothing items.
HEALTH CANADA ARGUES CROWN COPYRIGHT
Health Canada, the federal agency that oversees Canada’s cannabis industry, argues that Crown holds the copyright in the symbol that Dream Crew Company wishes to trademark. The mark appears to be an exact replica of the Standardized Cannabis Symbol, which is required by the Cannabis Regulations to appear on the label of all cannabis products that contain THC in a concentration greater than ten micrograms per gram.
In a statement provided to MarketWatch, Eric Morrissette, the chief of media relations for Health Canada, states:
The standardized cannabis symbol is protected by Crown copyright and intended to be used for public health and safety purposes only and not for private commercial means […] It can be an infringement of Crown copyright to reproduce the symbol for commercial purposes without permission to do so from the copyright owner.
RESPONSE FROM THE UNITED STATES PATENT AND TRADEMARK OFFICE
On November 21, 2019, the USPTO refused the registration of the applied-for mark. However, the refusal was not specifically for reasons relating to Health Canada’s Crown copyright, but rather, due to a likelihood of confusion with the US registered mark no. 1954405 for the word mark THC. The office action notes that both marks are comprised of identical lettering, namely, THC. This section 2(d) refusal applies only to the mark’s use with respect to the goods and services of Class 25. This includes boots, coats, dresses, gloves, hats, hoodies, and other articles of clothing.
The USPTO also noted refusal on the basis that the applicant did not have a bona fide intent to lawfully use the mark in commerce as of the filing date of the application. Additionally, it is argued that the mark is a universal symbol that does not function as a trademark or service mark to indicate the source of the applicant’s goods and to identify and distinguish them from others. These refusals apply to majority of the classes of goods and services that Dream Crew Company listed in its application to the USPTO. The “failure to function as a trademark” refusal relates directly to evidence from other sources, such as CANADA.CA. Given that consumers are accustomed to seeing this symbol used in the manner outlined by the evidence, when it is applied to the applicant’s goods, the USPTO argues that consumers would perceive it merely as “informational matter indicating that the goods are comprised of THC derived from cannabis or marijuana.”
The USPTO further refused the mark due to a lack of lawful use in commerce.[1] The Controlled Substances Act (CSA) prohibits manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana. The applied-for mark relates to goods that consist of items that are prohibited by the CSA, and which are intended to include marijuana.
WHAT’S NEXT?
If Drake and the Dream Crew Company argue to overcome the USPTO’s refusal, a response must be filed with the USPTO within six months of the issue date. Otherwise, the application will be abandoned.
Written by Alessia Monastero, IPilogue editor and articling student at Deeth Williams Wall LLP.
[1] Gray v Daffy Dan’s Bargaintown, 823 F2d 522, 526, 3 USPQ2d 1306, 1308 (Fed Cir 1987).