Priority Pitfalls

The Trademark Trial and Appeal Board’s recently issued precedential decision dismissing an opposition alleging a likelihood of confusion between the registered mark SMOK and a pending application for the mark SMOKES and Design (below) presents a number of interesting priority issues, including: 1) priority as it uniquely impacts applications for marks filed for goods for which federal legality has changed, such as via the 2018 Farm Bill; and 2) properly pleading priority of marks.

In this case, Opposer opposed registration of the mark SMOKES and Design (disclaiming “SMOKES”) for “cigarettes containing tobacco substitutes not for medical purposes containing only cannabis with a delta-9 THC concentration of not more than 0.3% on a dry weight basis,” in International Class 34, alleging a likelihood of confusion with Opposer’s 11 prior registrations for SMOK and SMOK-formative marks for electronic cigarettes, parts, components, and related retail services. Opposer also pleaded ownership and prior use of “a family of marks around the wording SMOK in connection with various smoking articles in Class 034.” (p. 3) Though the parties’ goods were determined to be related, the Board ruled that there was no likelihood of confusion because (1) the marks are dissimilar based on the “weakness of the common element” and the “sufficiently distinctive” design elements in Applicant’s mark; and (2) the evidence of record did not prove that Applicant’s cannabis cigarettes and Opposer’s tobacco products are sold in the same channels of trade. (pp. 44 and 51)

However, the more interesting takeaway may be how priority is calculated in applications whose timelines straddle the federal legality of their covered goods. In this case, Applicant filed its SMOKES and Design application on March 29, 2018 and claimed use of the mark as least as early as March 1, 2018. However, these dates were amended to an effective date of December 20, 2018 following Enactment of the 2018 Farm Bill, pursuant to the USPTO’s Examination Guide 1-19 for marks for cannabis and cannabis-related goods and services.

On the other hand, while Opposer’s use and application dates predated the amended/effective filing dates of Applicant, Opposer failed to properly plead its prior registrations and its prior use/common law rights. Opposer’s only acceptably-pleaded registration (i.e., for the SMOK mark, Reg. No. 6072213) was filed four months after Applicant’s original filing date, i.e., July 31, 2018. While the priority findings were not dispositive in this particular case (as Opposer’s priority was admitted into evidence via other testimony), it is important to keep the impact on priority dates from new legislation in mind – particularly as cannabis brands undertake prospective filings in the hopes of further action on federal legalization.

This opinion is also a good reminder of the benefits of selecting strong marks to begin with, for even if a merely descriptive mark ultimately registers on the Principal Register under 2(f), that registration may still face enforcement challenges. In this case, the Board found that disclaimer of the term “SMOKES” in Applicant’s mark, and the registration of Opposer’s SMOK mark under 2(f), both demonstrated that the terms are not inherently distinctive.

This article appeared in the November 2022 issue of MarkIt to Market®. To view our past issues, as well as other firm newsletters, please click here.