TTAB Finds 4:20 Trademark Deceptive

The Trademark Trial and Appeal Board (TTAB or Board), part of the US Patent and Trademark Office (USPTO), has found that a proposed registration of the “4:20” trademark by Republic Technologies (NA) LLC was deceptively misdescriptive and thus not allowed.

Republic is widely known for its “ZIG-ZAG” brand of rolling papers.

As the Republic website explains,

The “zouave brand” was launched in the heart of the Alps in 1894 and owes its name to the zig-zagged interleafing of the rolling papers. The iconic image of the Zig-Zag man, a member of the French North African regiment, that adorns its packaging makes it a unique, globally recognized product even today. Zig-Zag booklets are coveted the world over for their fine white paper and the quality of the natural Arabic gum they use.

Republic sought to register the mark for:

tobacco; cigarette papers; cigarette filters; cigarette tubes; cigarette rolling machines; handheld machines for injecting tobacco into cigarette tubes; machines allowing smokers to make cigarettes by themselves; none of the foregoing containing or for use with cannabis, in International Class 34.

(Emphasis added.)

The Trademark Examining Attorney refused registration of the proposed mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1) because it was found to be deceptively misdescriptive of the identified goods.

Under (e)(1),

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(e)

Consists of a mark which (1) when used on or in connection with the goods of the applicant, is merely descriptive or deceptively misdescriptive of them…

For example, noted the Board, in In re Hinton, the proposed mark “THCTea” was deceptively misdescriptive of tea-based beverages not containing THC, and in In re Shniberg, the proposed mark SEPTEMBER 11, 2001 was deceptively misdescriptive of history books and entertainment services not pertaining to the events of September 11, 2011 [sic].

As the Board explained,

A term is considered deceptively misdescriptive if (1) the term misdescribes a quality, feature, function, or characteristic of the goods or services with which it is used and (2) consumers would be likely to believe the misrepresentation.

As to the first part of the test, said the TTAB,

a mark is misdescriptive when it is merely descriptive, rather than suggestive, of a significant aspect of the goods … which the goods … plausibly possess but in fact do not…. A term is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods … with which it is used.

Also,

This requires consideration of the context in which the proposed mark is used or intended to be used in connection with those goods and the possible significance that the proposed mark would have to the average purchaser of the goods in the marketplace.

Evidence that a term is merely descriptive to the relevant purchasing public, said the TTAB, “may be obtained from any competent source, such as dictionaries, newspapers, or surveys.”

The Examining Attorney submitted an entry from DICTIONARY.COM of “420 or 4/20 or 4:20,” which defines “4:20” as a slang term for marijuana/cannabis:

1. marijuana: Are you carrying any 420 on you?
2. marijuana drug use: Police presence at the concert discouraged 420. The guys at the party were all 420-friendly.
3. the twentieth day of the fourth month, or the time 4:20, when referenced as a day or time for cannabis consumption or the celebration of marijuana culture: The head shop has a big pipe sale every year on 420.

According to Fox News,

420 Day is celebrated every year on April 20, when cannabis producers, consumers, and advocates celebrate and smoke marijuana.

It’s not clear where the custom originated, according to Fox, but some believe it came from California, where in the 1970s, a group of teenagers from San Rafael High School in Marin County would gather to ritualistically smoke marijuana at 4:20 p.m. each day.

According to Time,

Some say “420” is code among police officers for “marijuana smoking in progress.” Some note 4/20 is also Adolf Hitler’s birthday. And some go as far as to cite Bob Dylan’s song “Rainy Day Women #12 & 35” because 12 multiplied by 35 equals 420.

However, Time favors the veracity of the Marin County origin story:

In 1971, five students at San Rafael High School would meet at 4:20 p.m. by the campus’ statue of chemist Louis Pasteur to partake. They chose that specific time because extracurricular activities had usually ended by then. This group — Steve Capper, Dave Reddix, Jeffrey Noel, Larry Schwartz, and Mark Gravich — became known as the “Waldos” because they met at a wall. They would say “420” to each other as code for marijuana.

According to Time,

Reddix’s brother helped him get work with Grateful Dead bassist Phil Lesh as a roadie… On Dec. 28, 1990, a group of Deadheads in Oakland handed out flyers that invited people to smoke “420” on April 20 at 4:20 p.m. One ended up with Steve Bloom, a former reporter for High Times magazine, an authority on cannabis culture. The magazine printed the flyer in 1991 and continued to reference the number. Soon, it became known worldwide as a code for marijuana. In 1998, the outlet acknowledged that the “Waldos” were the “inventors” of 420.

According to the TTAB,

Because Applicant’s identification of goods specifies “none of the foregoing containing or for use with cannabis,” the proposed mark 4:20 misdescribes a significant characteristic or feature of the goods.

Under the second part of the test,

[t]he Board [applies] the reasonably prudent consumer test in assessing whether a proposed mark determined to be misdescriptive involves a misrepresentation consumers would be likely to believe.

To show that consumers are likely to believe the misdescription, the Examining Attorney pointed to evidence “showing that cannabis smoking products are common and available to consumers in the marketplace.”

The TTAB concluded:

This evidence shows that consumers are accustomed to encountering in the marketplace smoking paraphernalia for use with cannabis. It is therefore likely that the reasonably prudent consumer (i.e., someone who consumes cannabis) would believe that Applicant’s goods, promoted under the proposed 4:20 mark, could contain or could be for use with cannabis.

Republic contended that 4:20

is used to refer to a smokers’ happy hour, much like 5:00 has, for many years, been a way to refer to happy hour for alcohol (e.g., ‘It’s 5:00 somewhere.’),” and that it “can refer to a ‘happy hour’ generally—including for non-cannabis smokers.”

As “evidence” of this usage, Republic pointed to a single article, dated August 3, 2017, posted in the “Lifestyle” section of the Leafly.com website, titled “Forget 5:00, 4:20 Is the New Happy Hour.”

The TTAB concluded that

This article provides further support for our finding above that 4:20 is a slang term for cannabis and its use. But it does not discuss tobacco or any smoking paraphernalia, and it therefore does not support Applicant’s argument that 4:20 is suggestive of the identified goods.