TTAB Delivers Sobering Hit to THCTea
The Trademark Trial and Appeal Board found the mark “THCTea” to be deceptively misdescriptive when the underlying product contained no THC—the chief intoxicant in marijuana.
Applicant, who intended to use the mark for tea-based beverages, claimed that “THCTea” is not intended to stand for THC, but instead for “The Honey Care Tea” or “Tea Honey Care”.
The board analyzed whether the mark was deceptively misdescriptive using a two-part test. First, the board considered whether “THCTea” misdescribes a significant aspect of the product. Relying on its single dictionary definition, the board found that THC refers to the principle psychoactive in marijuana. Because Applicant’s tea-based beverages do not contain THC, the board concluded that the mark misdescribes the goods.
Second, the board considered whether reasonably prudent consumers would believe that “THCTea” contains THC. While Applicant argued that only a “rather gullible, uninformed consumer” would believe that “THCTea” would contain an illicit substance, the board disagreed. Acknowledging that over 20 states and the District of Columbia have legalized the possession of marijuana to varying degrees, the board noted that THC-based beverages are already hitting the shelves. With legal THC products available in some states, the board concluded that a reasonably prudent consumer would likely believe that “THCTea” contains THC. Moreover, the board found that such a feature would be highly relevant to a consumer’s purchasing decision.
The board ultimately ruled that Applicant’s mark was deceptively misdescriptive, having the capability of confusing and misleading consumers if marketed alongside THC-based products.
In re Christopher C. Hinton, Serial No. 85713080 (TTAB September 14, 2015) [precedential].
Barbeque Manufacturer Feels the Burn after TTAB Ruling
The Trademark Trial and Appeal Board sustained the opposition to an application to register SWISS GRILLS for lack of bona fide intent at the time of filing and for likelihood of confusion with the Opposer’s mark.
Former business partners, Applicant and Opposer are competitors in the outdoor grill industry. Applicant, Wolf Steel Ltd., has marketed outdoor grilling equipment under its NAPOLEON trademark for over 30 years in the United States and abroad. Opposer, Swiss Grill Ltd., has been marketing similar equipment abroad using its SWISS GRILL trademark since 2009.
During the dispute that ultimately ended the business relationship, the CEO of Wolf Steel reportedly told Swiss Grill representatives: “I’m bigger than you are, I am stronger than you are, and I will make sure you do not succeed.” While the CEO denies the exchange, his company filed its own UK application to register the mark SWISS GRILLS—an application Wolf Steel ultimately withdrew.
Wolf Steel then brought the battle to the United States when it filed the subject SWISS GRILLS application in June 2011. Swiss Grill opposed the application asserting priority through pre-sale activities in the United States, likelihood of confusion, and that Wolf Steel lacked the requisite bona fide intent to use the mark at the time of filing.
After a thorough review of an inconsistent record, the board concluded that Wolf’s assertion of bona fide intent to use is “belied by the evidence.” The board was blunt with its incredulity: “[t]he record as a whole reveals that Applicant is unable to get its story straight.” Ultimately finding little credibility in Applicant’s position, the board found that Applicant had no bona fide intent to use the SWISS GRILLS mark at the time of filing.
The board also considered the Opposer’s likelihood of confusion claim. First, the board found that the 2010 sale of SWISS GRILL barbeque units to a distributor in the United States gives Opposer priority over Wolf Steel’s 2011 application. Further, the board concluded that Applicant’s SWISS GRILLS would likely be confused with Opposer’s SWISS GRILL.
Accordingly, the board sustained Swiss Grill’s opposition to Wolf Steel’s Application for lack of bona fide intent at the time of filing and on the ground that use of the mark would likely cause confusion.
Swiss Grill Ltd. et al. v. Wolf Steel Ltd., Opposition No. 91206859 (TTAB September 10, 2015) [precedential].