National Concessions Group Inc.

This Opinion is a

Precedent of the TTAB

Mailed: May 3, 2023

UNITED STATES PATENT AND TRADEMARK OFFICE

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Trademark Trial and Appeal Board

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In re National Concessions Group, Inc.

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Serial No. 87168058

Serial No. 87183434

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Pamela N. Hirschman, Todd P. Blakely and Jeanette E. Sinclare of Sheridan Ross

P.C., for National Concessions Group Inc.

Jeffrey J. Look, Trademark Examining Attorney, Law Office 130,

John Lincoski, Managing Attorney.

_____

Before Thurmon, Deputy Chief Administrative Trademark Judge,

Greenbaum and English, Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:

I. Procedural History

National Concessions Group, Inc. (“Applicant”), self-identified as “the Largest

Cannabis Company in the US,”1 seeks registration on the Principal Register of the

1 November 7, 2017 Office Action, TSDR 16-18 (November 7, 2016 press release issued by

Applicant, titled “Bakked is the Newest Brand from the Largest Cannabis Company in the

US,” posted on the MARKETWIRED.COM website). All references to the applications and

Briefs/Board Orders are to the TSDR record and TTABVUE file, respectively, in Application

Serial No. 87168058, unless otherwise specified.

Serial Nos. 87168058 & 87183434

marks BAKKED (in standard characters) and a stylized drop design mark, displayed

as , both for

Essential oil dispenser, sold empty, for domestic use, in

International Class 21.2

In each application, Applicant submitted a single, identical specimen showing the

two marks (and a third mark, “THE DABARATUS,” which is not involved in this

consolidated appeal) on the goods:

May 5, 2017 Amendment to Allege Use, TSDR 2.

The Trademark Examining Attorney refused registration of each mark based on

the contention that the identified goods are unlawful drug paraphernalia under the

federal Controlled Substances Act (“CSA”), 21 U.S.C. § 863, and thus cannot be sold

in lawful commerce under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051

and 1127. Applicant posits that the goods are not drug paraphernalia under the CSA’s

definition of the term because they are used to dispense essential oil, and in the

2 Application Serial No. 87168058 (BAKKED) was filed on September 12, 2016, and

Application Serial No. 87183434 (stylized drop design mark) was filed on September 26, 2016,

both based upon Applicant’s allegation of a bona fide intention to use the mark in commerce

under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Applicant filed Amendments

to Allege Use on May 5, 2017 and May 8, 2017, respectively, claiming, in each instance,

November 29, 2016 as the date of first use anywhere and use in commerce.

Application Serial No. 87183434 includes the following description of the mark: “The mark

consists of two parallel curved lines forming a teardrop, being wrapped around a smaller solid

teardrop.” Color is not claimed as a feature of the mark.

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alternative, that Colorado state law permits Applicant to manufacture and sell the

identified goods, so even if the goods otherwise would be considered prohibited drug

paraphernalia under the CSA, one or both exemptions set out in Sections 863(f)(1)

and 863(f)(2) of the CSA, 21 U.S.C. §§ 863(f)(1) and 863(f)(2) (discussed below), make

the goods lawful under federal law, and thus eligible for federal trademark

registration.3

Applicant appealed the refusal and requested reconsideration in each application.

The requests for reconsideration were denied.

After the appeals were fully briefed,4 7, 11 and 12 TTABVUE, the Board

suspended and remanded the applications to the Examining Attorney to issue a

nonfinal Office Action in each application requesting information from Applicant

under Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b), concerning the legislative

histories of Sections 863(f)(1) and 863(f)(2) of the CSA, and the provisions of the

Colorado Constitution and Colorado Criminal code that Applicant cited and relied on

in its briefs.5 15 TTABVUE.

3 Article XVIII, Section 16(f) of the Colorado Constitution permits the manufacture and sale

of “marijuana accessories,” which are defined as “any equipment, products … which are used,

intended for use, or designed for use in … repackaging, storing, vaporizing, or containing

marijuana, or for ingesting, inhaling, or otherwise introducing marijuana into the human

body ….” Colo. Const. art. XVIII, §§ 16(f) and 16(2)(g) (2018). October 24, 2018 Final Office

Action, TSDR 12, 10. And the definition of “drug paraphernalia” in the Colorado Criminal

Code excludes “any marijuana accessories as defined in section 16(2)(g) of article XVIII of the

state constitution.” C.R.S. 18-18-426 (2018). Id., at TSDR 6-7.

4 The Board consolidated proceedings after Applicant filed its Appeal Brief, 7 TTABVUE, and

at the Examining Attorney’s request, 9 TTABVUE, because the appeals present the same

issue and are based on the same records. 10 TTABVUE.

5 The Examining Attorney followed the Board’s instructions and issued a nonfinal Office

Action on June 30, 2020 with a Request for Information. Applicant submitted multiple

documents comprising more than 700 pages in response, including, inter alia, information

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On February 5, 2021, the Examining Attorney issued a Supplemental Final Office

Action in each application maintaining and continuing the refusal under Sections 1

and 45 of the Trademark Act. The Board resumed proceedings and allowed Applicant

and the Examining Attorney time to file Supplemental Appeal Briefs, 17 TTABVUE,

which they did. 18, 21 and 22 TTABVUE.

We affirm the refusal to register in each application.

II. Applicable Law

Under Section 1(a) of the Trademark Act, a mark may not be registered unless it

is “used in commerce.” Section 45 of the Trademark Act defines “use in commerce” as

“the bona fide use of a mark in the ordinary course of trade.” In addition, “[t]he word

‘commerce’ means all commerce which may lawfully be regulated by Congress.” Id.

Section 45 further specifies that “use in commerce” of a mark for goods occurs when

the mark “is placed in any manner on the goods . . . and the goods are sold or

transported in commerce.” Id.

“A valid application cannot be filed at all for registration of a mark without ‘lawful

use in commerce….’” Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 3 USPQ2d 1306,

1308 (Fed. Cir. 1987). The Board also has “consistently held that, to qualify for a

about the CSA, the Colorado Constitution and Criminal code; the “Cole Memorandum” and

its subsequent rescission via the “Sessions Memorandum”; and the “Rohrabacher-Farr

Amendment.” December 15, 2020 Response to Office Action, TSDR 2-721 (generally). But as

one commentator noted, “there is scant legislative history regarding the authorization

exemption. As a result, little is known about how Congress intended the provision to operate.”

Breanna C. Phillips, Note, “The Authorization Continuum: Investigating the Meaning of

‘Authorization’ Through the Lens of the Controlled Substances Act.” 72:4 Vand. L. Rev. 1335,

1344-45 (2019). December 15, 2020 Response to Office Action, TSDR 135, 144-45.

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Serial Nos. 87168058 & 87183434

federal … registration, the use of a mark in commerce must be ‘lawful’” under federal

law in the sense that the commerce recited in the application complies with applicable

federal laws that regulate the goods. In re PharmaCann LLC, 123 USPQ2d 1122,

1123-24 (TTAB 2017) (quoting In re JJ206, LLC, 120 USPQ2d 1568, 1569 (TTAB

2016) and In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016) (affirming unlawful use

refusals to register marks for marijuana-related products or services)). See also

Coahoma Chem. Co. v. Smith, 113 USPQ 413, 418 (Comm’r. Pat. 1957), aff’d on other

grounds, 264 F.2d 916, 121 USPQ 215 (CCPA 1959) (“[U]se of a mark in connection

with unlawful shipments in interstate commerce is not use of a mark in commerce

which the Patent [and Trademark] Office may recognize.”); 37 C.F.R. 2.69 (providing

for inquiry to assess the lawfulness of the commerce recited in an application). Thus,

for a mark to be eligible for federal registration, “any goods … for which the mark is

used must not be illegal under federal law.” PharmaCann, 123 USPQ2d at 1124

(quoting JJ206, 120 USPQ2d at 1569 and Brown, 119 USPQ2d at 1351). The lawful

use requirement avoids putting the USPTO “in the anomalous position of accepting

as a basis for registration a shipment in commerce which is unlawful under a statute

specifically controlling the flow of such goods in commerce.” In re Stellar Int’l Inc.,

159 USPQ 48, 51 (TTAB 1968).

A. Controlled Substances Act – Drug Paraphernalia

Section 863(a) of the CSA makes it unlawful to (1) sell or offer for sale, (2) use the

mails or any other facility of interstate commerce to transport, or (3) import or export

drug paraphernalia. Drug paraphernalia is defined as “any equipment, product, or

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material of any kind which is primarily intended or designed for use in

manufacturing, compounding, converting, concealing, producing, processing,

preparing, injecting, ingesting, inhaling, or otherwise introducing into the human

body a controlled substance, possession of which is unlawful under [the CSA].” 21

U.S.C. § 863(d); see also JJ206, 120 USPQ2d at 1569. The CSA identifies marijuana

and marijuana-based preparations as controlled substances that are unlawful to

possess. 21 U.S.C. § 812(a) & (c) (identifying “Marihuana,” by its alternate spelling,

as a controlled substance); 21 U.S.C. §§ 841 & 844 (placing prohibitions on the

possession of controlled substances). Thus, equipment or products primarily intended

or designed for use in ingesting, inhaling, or otherwise introducing marijuana into

the human body (e.g., water pipes, roach clips and bongs) constitute unlawful drug

paraphernalia under Section 863(d) of the CSA, but for two exemptions set out in

Section 863(f).

This section shall not apply to–

1. any person authorized by local, State, or Federal law to

manufacture, possess, or distribute such items; or

2. any item that, in the normal lawful course of business, is

imported, exported, transported, or sold through the mail or

by any other means, and traditionally intended for use with

tobacco products, including any pipe, paper, or accessory.

As summarized above, Applicant argues that its goods do not fall within the

meaning of “drug paraphernalia” under Section 863(d) of the CSA because they are

used to dispense essential oil, and in the alternative, that its goods qualify for an

exemption under either Section 863(f)(1) of the CSA because Applicant is “authorized

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by” Colorado state law to “manufacture, possess, or distribute” the goods, or Section

863(f)(2) of the CSA because Applicant’s goods are of the type traditionally intended

for use with tobacco products.

B. Analysis

1. Are Applicant’s Identified Goods Prohibited Drug Paraphernalia?

We consider first whether Applicant’s “essential oil dispenser, sold empty, for

domestic use” is prohibited drug paraphernalia under Section 863(d) of the CSA. This

product is not unlawful as identified in the application. However, if the identification

of goods or services in an application does not reveal a per se violation of the CSA, as

in JJ206, 120 USPQ2d at 1570 (applicant’s “identified goods fall within the definition

of illegal drug paraphernalia under the CSA”), extrinsic evidence may be used to show

such a violation. Brown, 119 USPQ2d at 1351-52 (applicant’s specimen and website

showed that its “retail store services featuring herbs” included the sale of

marijuana).6 The Examining Attorney contends that Applicant’s essential oil

dispenser is illegal drug paraphernalia under § 863(d) of the CSA, because its

primary intended purpose is to dispense premeasured amounts of cannabis-based oil

to a vaping or smoking device for “dabbing.”

As background, the Examining Attorney submitted several articles collectively

explaining the “dabbing” process as a means or method of inhaling superheated

cannabis concentrates to produce a quicker “high” than by smoking marijuana in herb

6 Section 863(e) of the CSA also provides guidance for determining whether a product

constitutes drug paraphernalia, including reviewing the instructions on how to use the item,

and the manner in which the item is displayed for sale.

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or flower form, or by consuming it in an edible product. This evidence describes

“dabbing” as a relatively new trend in which cannabinoids and terpenes from

cannabis are extracted and concentrated into a liquid oil or semi-solid wax; the

concentrate is applied to specialized devices, such as “nails” or “dab rigs” (which are

attachments to bongs or pipes); and the concentrate is heated to the point of

vaporization rather than combustion. The articles, all attached to the November 7,

2017 Office Action, are as follows:

• “The Official Dab Dictionary” by Bobby Black, dated July 30, 2013, posted

on the HIGHTIMES.COM website (TSDR 28-32);

• “The Vocab of Dab” by Laura Notini, dated May 21, 2015, posted on the

CANNABISNOWMAGAZINE.COM website (TSDR 33-35);

• “Dabbing is Becoming a New Way to get High” (author unknown), dated

June 13, 2012, posted on the THC.ME website (TSDR 36-41);

• “The Origins of Dabbing: Where Did it all Begin?” by Brandon Lee, dated

March 14, 2016, posted on the HERB.CO website (TSDR 42-50); and

• “Dab Life: A Brief and Wondrous History of Concentrates and The 710

Phenomenon” by Barry Bluntman, dated March 19, 2012, posted on the

MARIJUANA.COM website (TSDR 51-62).

To support his contention that Applicant’s goods comprise illegal drug

paraphernalia, the Examining Attorney points to Applicant’s and third-party

websites that promote Applicant’s essential oil dispenser as a “dabbing” tool. See

Brown, 119 USPQ2d at 1351-52 (Board may consider extrinsic evidence when

determining whether the CSA prohibits a product). The evidence is as follows:

• Applicant’s ORGANALABS.COM/brands webpage states: “Bakked is the

creator of the Dabaratus, a portable multi-functional dabbing tool available

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in four strains of Organa Labs oil: Indica, sativa, hybrid and CBD.”

November 7, 2017 Office Action, TSDR 23-24. And Applicant’s

ORGANABRANDS.COM website, displayed below, shows the goods pre-

filled with “CO2 extracted terpene rich distillate” on Applicant’s homepage

with the text: “Bakked products offer high purity and value to the cannabis

market.” Id., at TSDR 9.

• Applicant’s BAKKED.COM products webpage, displayed below, touts “THE

DABARATUS” as “THE ALL-IN-ONE TOOL FOR DABBING”:

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The webpage advertises the “Dabaratus” as “AMONG THE BEST DAB TOOLS

ON THE MARKET” that delivers “THE PERFECT DOSE OF CANNABIS

EXTRACT.” The text explains that the “Dabaratus” is designed to deliver “a

consistent dose of Bakked’s purest Cannabis oil. While other dab tools may waste

some of the precious cannabis extract during dabbing, the Dabaratus is designed to

dispense only what you need every time.”

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November 7, 2017 Office Action, TSDR 63-69 (at 65-66).

• In a February 1, 2017 press release issued by Applicant, titled “Organa

Brands Brings Convenience and Innovation to the Cannabis Oil Market,”

subtitled “New Bakked Dabaratus is the Best Tool for Dabbing,” posted on

the MARKETWIRED.COM website, Applicant announced the launch of the

Bakked Dabaratus, a clickable, all-in-one dabbing tool. The

device is pre-filled with Bakked’s award winning cannabis

oil distillate and supplies a precisely metered dose for both

medical and recreational users.

The Bakked Dabaratus brings convenience to the widely

popular dabbing market. Sleek, subtle and user-friendly,

the device is a pre-filled pen with a button that releases a

drop of indica, sativa or hybrid cannabis oil distillate which

can be placed directly onto a heated dab rig due to the

stainless steel tip. The device can also be used to dress

edibles and other cannabis flower products. The size of the

drop and amount is controlled by the individual and allows

for the specific dosage desired by the consumer.

A single click from the Bakked Dabaratus does away with

the current inconvenience of dabbing and eliminates

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possible risk of spillage or residual mess, making it the

most efficient dabbing product available.

“Dabbing, while popular, requires multiple pieces of

equipment and often results in a sticky mess,” said Chris

Driessen, President of Organa Brands. “The Dabaratus

eliminates many of these problems by simplifying the

process, while delivering a metered dose of ultra-pure

distillate.”

October 24, 2018 Office Action, TSDR 3-5.

• LEAFLY.COM, a third party website promoting Applicant’s goods, touts

the “Bakked Dabaratus,” as an “All-in-one Dabbing Tool filled with 1 gram

of Terpene Rich Distillate,” and displays the goods as follows:

The “About Us” section on the LEAFLY.COM website states: “Our CO2 extracted

high-potency cannabis products provide you with a clean and pure experience every

time. Our artisan-crafted small batch distillation method allows for the widest range

of terpenes and cannabinoids possible. All Bakked distillates are strain-specific and

available in Indica, Sativa and Hybrid.” And according to the “Product Details”

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section, “The Dabaratus provides a clean, one-click solution for dabbing. Equipped

with a heat resistant metal tip and infused with our terpene-rich distillate, the

Dabaratus delivers unsurpassed purity and convenience for the diligent dabber.”7

November 7, 2017 Office Action, TSDR 21-22.

• A July 6, 2017 article titled “The Dabaratus[:] Available wherever

Bakked products are carried” by Culture Magazine, posted on third-party

website IREADCULTURE.COM, displays Applicant’s goods (bearing both

marks, as well as the “Dabaratus” mark), prefilled with cannabis distillate

oils.8 The article touts that Applicant’s goods primarily are used for

“dabbing”: “If ever there was a cannabis product yearning for an

infomercial, it’s the DABARATUS. … The DABARATUS is a one-gram CO2

extracted, terpene-rich distillate-dispensing tool. This syringe dabs out a

dose of distillate each time you push down to dispense. … The

DABARATUS is completed with a heat resistant metal tip so you can dab

directly onto your rig! As rich in body buzz as it is in flavor and simplicity,

this tool is a must-have for those who worship at the throne of the dab.”

November 7, 2017 Office Action, TSDR 11-15.

7 Another third-party website, FASTANDFRIENDLY.US, offers Applicant’s “Dabaratus” for

sale for $60. This website displays Applicant’s goods with the applied-for marks, prefilled

with cannabis distillate oils. In the “Product Description” section, the website advertises the

goods using identical (or nearly identical) language as LEAFLY.COM. November 7, 2017

Office Action, TSDR 19-20.

8 This display of Applicant’s goods appears to be identical to the LEAFLY.COM display

reproduced above.

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This evidence amply supports a finding that Applicant’s identified “essential oil

dispenser, sold empty, for domestic use,” which is sold by the “Largest Cannabis

Company in the US,”9 primarily is intended or designed for use in connection with

preparing, inhaling or introducing marijuana into the human body via “dabbing.” The

consistent references in the evidence to the “pre-filled” version of Applicant’s goods

provides further support for this finding. Indeed, there is no evidence to support a

finding that Applicant’s goods are primarily intended or designed for any use other

than as a “dabbing” tool. The identified goods therefore comprise prohibited drug

paraphernalia, as defined in Section 863(d) of the CSA.

In making this finding, we have considered, but have found unpersuasive,

Applicant’s attempt to draw parallels between its goods and razor blades and postage

scales. App. Br., 7 TTABVUE 18. Although razor blades and postage scales could be

used to cut and weigh illegal drugs, they are not considered prohibited drug

paraphernalia because razor blades primarily are intended for shaving, and postage

scales primarily are intended for weighing letters and packages prior to mailing;

unlike the demonstrated primary intended purpose of Applicant’s goods, razor blades

and postage scales are not specifically designed, or primarily intended, for use with

inhaling or ingesting marijuana or other illegal drugs.

We also find unpersuasive Applicant’s attempt to analogize its applications to

several third-party registrations, which Applicant characterizes as evidence that “(i)

9 November 7, 2017 Office Action, TSDR 16-18 (Applicant’s November 7, 2016 press release

posted on MARKETWIRED.COM).

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the Office has previously registered many marks for goods that are traditionally

intended for use with tobacco products that may also be used with cannabis products,”

and “(ii) it is not the practice of the Office to inquire as to the legal use of goods that

are empty containers sold for use by others.” App. Br., 7 TTABVUE 18. Most of the

registrations are distinguishable from Applicant’s goods because they specifically

identify tobacco, traditional tobacco products (tobacco jars, tobacco grinders, rolling

paper) or e-cigarettes, none of which are unlawful under the CSA or require

additional inquiry. Regardless, each application must be considered on its own record

to determine eligibility to register. In re Cordua Rests., Inc., 823 F.3d 594, 118

USPQ2d 1632, 1635 (Fed. Cir. 2016); see also In re Nett Designs, Inc., 236 F.3d 1339,

57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some

characteristics similar to Nett Designs’ application, the PTO’s allowance of such prior

registrations does not bind the Board or this court.”). Further, the USPTO refuses

registration of marks not used in lawful commerce, and will inquire about compliance

with federal laws to support a refusal or otherwise facilitate proper examination.

Trademark Rule 2.61, 37 C.F.R. § 2.61. The Examining Attorney properly followed

this procedure by issuing a request for information in the first Office Action.

December 22, 2016 Office Action, TSDR 1.

2. Is Applicant Engaged in Activities Prohibited Under Section

863(a) of the CSA?

Under Section 863(a) of the CSA: “IN GENERAL It is unlawful for any person—(1)

to sell or offer to sell drug paraphernalia; (2) to use the mails or any other facility of

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interstate commerce to transport drug paraphernalia; or (3) to import or export drug

paraphernalia.”10

The evidence discussed above supports a finding that Applicant is selling or

offering to sell the identified goods, which we have found to comprise drug

paraphernalia, in violation of Section 863(a)(1) of the CSA.

The record also supports a finding that Applicant uses the mails or facilities of

interstate commerce to transport drug paraphernalia in contravention of Section

863(a)(2) of the CSA. In particular, in response to Request for Information No. 1 from

the Examining Attorney, which asked Applicant to explain how its goods are sold,

Applicant stated: “Applicant sells its essential oil dispensers empty to wholesale

distributors across the United States.” May 3, 2018 Response to Office Action, TSDR

1. And in response to Request for Information No. 2, which asked Applicant to submit

documentation of sales of the identified goods, Applicant submitted invoices showing

that it used FedEx to ship its identified goods from Colorado to a customer in

Berkeley, California. May 3, 2018 Response to Office Action Exhibit 3, TSDR 14-16.

As the Examining Attorney notes, “FedEx is a common carrier who uses facilities of

interstate commerce, such as trucks or airplanes, to transport Applicant’s goods

across state lines.” Ex. Atty. Br., 11 TTABVUE 9.

10 Because Section 863(a) of the CSA is written in the disjunctive, it is unlawful to violate any

of the three subsections.

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3. Do Applicant’s Goods Qualify for an Exemption, and if so, Does

the Exemption Provide a Basis for a Federal Trademark

Registration?

Having found that Applicant’s identified goods comprise drug paraphernalia per

Sections 863(d) and (e) of the CSA, and that Applicant has sold or distributed the

drug paraphernalia by using facilities of interstate commerce, we now consider

whether Applicant’s goods qualify for an exemption under Section 863(f) of the CSA,

and to the extent they do, whether Applicant therefore may obtain a federal

trademark registration for a mark for such goods.

As set out above, Section 863(f)(1) of the CSA exempts “any person authorized by

local, State, or Federal law to manufacture, possess, or distribute such items,” and

Section 863(f)(2) exempts “any item that, in the normal lawful course of business is

imported, exported, transported, or sold through the mail or by any other means, and

traditionally intended for use with tobacco products, including any pipe, paper, or

accessory.” We address each exemption in turn.

a. Section 863(f)(1) – Authorization Under Local, State or

Federal Law

Applicant argues that it is a “person authorized by … state … law to manufacture,

possess or distribute” the goods, and as such, it is exempted under Section 863(f)(1)

of the CSA from the prohibitions of the drug paraphernalia provisions discussed

above. This appears to be a matter of first impression at the Board. And while that

might ordinarily mean we are obliged to resolve the matter, in this case, we do not

need to reach the merits of Applicant’s argument. Even if Applicant’s interpretation

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of the Section 863(f)(1) exemption is correct, it is not entitled to the registration it

seeks.

First, the rights Applicant seeks are not limited to Colorado. A federal registration

would give Applicant presumptive exclusive rights to nationwide use of its mark in

association with the identified goods under Section 7(b) of the Trademark Act, 15

U.S.C. § 1057(b). Cf. Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218

USPQ 390, 393 (Fed. Cir. 1983) (“Applicant seeks a geographically unrestricted

registration under which it might expand throughout the United States. Under these

facts, it is not proper, as the TTAB found, to limit our consideration to the likelihood

of confusion in the areas presently occupied by the parties. Section 7(b) of the

Trademark Act of 1946, 15 U.S.C. § 1057(b), creates a presumption that the

registrant has the exclusive right to use its mark throughout the United States.

Therefore, the geographical distance between the present locations of the respective

businesses of the two parties has little relevance in this case.”).

Second, even accepting Applicant’s argument as to the meaning of the Section

863(f)(1) exemption, any authorization by Colorado of Applicant’s manufacture,

possession or distribution of the goods cannot override the laws of the other states or

federal law outside Colorado. A recent decision by the United States Court of

International Trade illustrates this point. In Eteros Techs. USA, Inc. v. United States,

592 F. Supp. 3d 1313 (Ct. Int’l Trade 2022), the court interpreted the Section 863(f)(1)

exemption and found the plaintiff “authorized” “and thereby exempted in Washington

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State from subsection 863(a)’s prohibition on importing drug paraphernalia.”11 In the

Eteros Tech. case, the court’s interpretation of the Section 863(f)(1) exemption meant

the government had no basis to seize and hold the goods.

In reaching this result, however, the court noted that “Washington State can only

‘authorize’ persons to partake in the enumerated activities of the (f)(1) exemption

within the confines of its own borders; if the drug paraphernalia leaves Washington,

the ‘authoriz[ation]’ inquiry begins anew in the context of the new state.”12 While

Applicant may be correct that Colorado has authorized it to manufacture, possess or

distribute the goods, such authorization does not extend beyond the borders of

Colorado. The Section (f)(1) exemption argued for here is tied to a geographic area—

that is, Applicant argues it is authorized by Colorado law to manufacture, possess or

distribute the goods in Colorado. But that exemption is insufficient to support the

federal trademark registration Applicant seeks, which would be nationwide in effect.

Compare Brown, 119 USPQ2d at 1351 (“[T]he fact that the provision of a product or

service may be lawful within a state is irrelevant to the question of federal

registration.”). We hold that when a Section 863(f)(1) exemption is applicable based

on state law, that exemption does not support federal registration.

11 Id. at 1320. Accord Keirton USA, Inc. v. United States, 600 F. Supp.3d 1270 (Ct. Int’l Trade

2022) (finding it “lawful for [the plaintiff] to possess and import its merchandise into the

State of Washington[,]” such “merchandise” being “parts and components” used to

manufacture the plaintiff’s “Twisted Trimmer,” which the plaintiff sells “to companies in the

State of Washington that process marijuana plants.”). In Eteros Tech, the plaintiff moved for

judgment on the pleadings, and stipulated for the purposes of its motion that the goods met

the federal statutory definition of “drug paraphernalia” under Section 863(d) of the CSA.

Eteros Tech., 592 F.Supp.3d at 1319.

12 Id. at 1331 n.27.

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Serial Nos. 87168058 & 87183434

b. Section 863(f)(2) – Traditional Tobacco Products

Applicant contends that the identified essential oil dispensers could be used to

dispense tobacco oil, and thus qualify for an exemption under Section 863(f)(2) of the

CSA because the goods “are of the type traditionally intended for use with tobacco

products.”13 App. Br., 7 TTABVUE 14. As support, Applicant submitted some

evidence indicating that tobacco oils have been used in the past for medicinal reasons,

and printouts from third-party online sellers DHGATE.COM and ALIBABA.COM

offering a handful of items identified as bottles for tobacco oil or tobacco tar. May 3,

2018 Response to Office Action Exhibit 2, TSDR 11-13; April 24, 2019 Request for

Reconsideration Exhibit C, TSDR 29. This dearth of evidence does not persuade us

that “essential oil dispensers, sold empty, for domestic use,” “traditionally” have been

used for tobacco based oils or substances. Moreover, none of the items shown on the

printouts are described as or resemble the goods on which Applicant uses its marks,

based on Applicant’s specimens and the website evidence displaying Applicant’s

goods, discussed above. Cf. BBK Tobacco & Foods LLP v. Central Coast Agri. Inc., ___

F.Supp.3d ___, 118 Fed. R. Evid. Serv. 1980, Slip Op., 2022 WL 2820144, at *29-30

(D. Az. 2022) (granting summary judgment to plaintiff on defendant’s unlawful use

counterclaim, finding “as a matter of law, the goods listed in connection with the

challenged registrations fall within the tobacco exemption, § 863(f)(2), because such

goods are either rolling papers expressly exempted, or accessories used in connection

13 We do not consider any arguments about other essential oils, as this exemption is limited

to traditional tobacco products. We also note that nothing in the record supports a finding

that Applicant uses its marks on anything other than an apparatus used to dispense

cannabis-based oils for vaping through the process of “dabbing.”

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Serial Nos. 87168058 & 87183434

with rolling papers, such as rolling trays, cigarette tubes, rolling machines, and

shredders and grinders for tobacco and other smokeable herbs.”) (internal citations

omitted); Lifted Ltd., LLC v. Novelty Inc., Slip Op., 2021 WL 4480566, at *3 (D. Col.

2021) (denying defendant’s “Motion to Decline Subject Matter Jurisdiction for

Illegality,” finding that the “Toker Poker” (tamper, cigarette holder and poker) “is an

item that is traditionally used for tobacco and, as a result, is not drug paraphernalia

pursuant to § 863.”).

III. Conclusion

Applicant cannot obtain federal registrations of its marks because Applicant’s

identified goods constitute drug paraphernalia under the CSA, the exemption in

Section 863(f)(1) asserted by Applicant, based on state law, does not support federal

registration, and the exemption in Section 863(f)(2) does not apply.

Decision: The refusal to register Applicant’s marks BAKKED and under

Sections 1 and 45 of the Trademark Act is affirmed in both applications.

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