Deceptive Matter and Canna Brands

Home | Canna Law Blog | Deceptive Matter and Canna Brands Deceptive matter is yet another pitfall faced by canna brands as they take steps to protect their intellectual property. According to the U.S. Trademark Act (commonly known as the Lanham Act), such matter may not be registered as a trademark (15 U.S.C. § 1052(a)). While to some extent this is a commonsense rule that seeks to protect the public, in practice its application can be surprisingly expansive. Cannabis brands should avoid using trademarks that could in any way be considered deceptive matter. When determining if a trademark consists of deceptive matter, USPTO applies a three-part test: (1) Is the term misdescriptive of the character, quality, function, composition or use of the goods? (2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods? (3) If so, is the misdescription likely to affect a significant portion of the relevant consumers’ decision to purchase? In some cases, it's not hard to conclude that USPTO will likely consider a trademark to consist of deceptive matter. Taking a hypothetical example, imagine a vodka called CannaVodka, which does not in fact contain cannabis. The term "Canna", as used in this imaginary trademark, is clearly misdescriptive of the composition of the vodka. Given the proliferation of canna drinks in the market, it is reasonable to expect that prospective purchases will believe the vodka contains cannabis. And by the same token, the presence of cannabis is likely to be a selling point for consumers. As we said earlier, though, USPTO can sometimes reach surprising conclusions when it comes to the Lanham Act's bar on registering deceptive matter as trademarks. This blogger generally takes any brand's claim of environmental friendliness with a grain of salt, on par with health insurance companies' assurance that I will "love" their service. Evidently, though, USPTO is less jaded. Recently, the agency has required brands making such claims to amend their applications, to clarify that their goods are in fact ecofriendly. Otherwise, the agency contends, the mark may be deceptive, insofar as it may be used in connection with goods that are in fact terrible for the planet. When choosing trademarks, brands need to consider whether they could in any way be considered deceptive matter. This analysis is made by focusing on how the brand relates to the character, quality, function, composition or use of the products. Brands seeking trademark protection overseas need to be extra careful, as other trademark offices might not offer the same procedural off-ramps that the USPTO typically does. Check Out Our Cannabis Law Services Share Twitter Facebook LinkedIn E-mail Comment Fred Rocafort Fred leads Harris Sliwoski’s intellectual property practice and is the coordinator of the firm’s international team. Much of Fred’s practice consists of helping cannabis businesses protect their brands. He also works with entrepreneurs and companies entering the Web3 space, a new frontier for IP law. Prior to joining Harris Sliwoski, Fred worked overseas for more than a decade, in both government and private sector roles. Fred is a regular contributor to the award-winning China Law Blog and Canna Law Blog. Fred began his career overseas as a U.S. consular officer in Guangzhou, China, where he advocated for fairer treatment of American companies and citizens in China and for stronger intellectual property rights enforcement. After entering the private sector, Fred worked at a Shanghai law firm as a foreign legal advisor and later joined one of the oldest American law firms in China, helping foreign companies navigate the Chinese legal environment. He also led the legal team at a Hong Kong-based brand protection consultancy, spending most of his time out in the field, protecting clients against counterfeiters and fraudsters in Greater China, Southeast Asia and Latin America. In addition to his IP work, as a native Spanish speaker, Fred works closely with different Harris Sliwoski teams on Latin America and Spain matters. Fred also provides advice to cannabis industry participants and other businesses on import and export transactions. Fred is an ardent supporter of FC Barcelona—and would be even in the absence of Catalan forebears who immigrated to Puerto Rico in the mid-1800s. 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