Earlier this month, Circle K Stores Inc., owner and operator of the chain of Circle K convenience stores, filed a Trademark Trial and Appeal Board (“TTAB”) Notice of Opposition against Medical Marijuana, Inc., a California company with a pending U.S. federal trademark application for the following design mark (the “MM ‘K’ Mark”):
The MM “K” Mark was filed to cover the following services in Class 035:
Marketing consultation in the field of botanical products and hemp-based products, namely, hemp-based personal care products, anti-aging products, food and nutritional supplements, chewing gums, candies, beverages, edible oils, and vaporizers; retail services provided through direct solicitation by a network of independent distributors and independent representatives directed to end-users featuring botanical products and hemp-based products containing or derived from cannabis with a delta-9 THC concentration of not more than 0.3% on a dry weight basis, namely, non-medicated hemp-based personal care products, non-medicated anti-aging products, and vaporizers; online retail store for botanical products and hemp-based products containing or derived from cannabis with a delta-9 THC concentration of not more than 0.3% on a dry weight basis, namely, non-medicated hemp-based personal care products, non-medicated anti-aging products, and vaporizers.
Circle K owns a number of U.S. federal trademark registrations covering services in Class 035 (such as retail store services, grocery store services, restaurant services, and other distribution channels for the sale of personal care products, anti-aging products, food and nutritional supplements, chewing gums, candies, beverages, edible oils, vaporizers, etc.), including the following “K” logo:
According to Circle K’s Notice of Opposition, the company operates nearly 10,000 stores in North America, and operates thousands of stores in Europe and Asia. Circle K alleges that the MM “K” Mark so resembles the Circle K mark(s) that, when used on or in connection with the goods identified in the Opposed Application, it is likely “to cause confusion, to cause mistake, or to deceive” consumers as to the source of the goods.
We’ve written before about the TTAB opposition process, and have also talked about what TTAB opinions related to cannabis typically look like. A trademark opposition is a proceeding in which one party seeks to prevent registration of another party’s trademark (as is the case here). If a party believes that it will be damaged by the registration of a mark, it can file an opposition. The TTAB’s Manual of Procedure provides guidance for TTAB proceedings, and the TTAB follows the Federal Rules of Civil Procedure.
Following application for a U.S. federal trademark, if an examining attorney approves an application for publication, that application will be published for opposition for a period of 30 days. During that 30-day opposition period, third-parties may file a Notice of Opposition with the TTAB, which begins the opposition proceeding. During the opposition period, third-parties may also request extensions to file a Notice of Opposition, granting them additional time to attempt settlement negotiations or begin the opposition process.
An opposition proceeding with the TTAB is similar to litigation in federal or state court. The Notice of Opposition that must be filed by an opposer is similar to a complaint in that it states the factual background of the case, the grounds for opposition of the trademark application, and the request for relief. Any person who believes it is or will be damaged by registration of a mark has standing to file a complaint.
At this point, Medical Marijuana Inc. has yet to file its response, but we will follow along to see if they do. If they fail to respond, a default judgment will be entered against them, and their application for the MM “K” Mark will be abandoned. This case is one of many in the long list of trademark disputes we’ve seen lately involving large corporations and cannabis companies, and could help inform future cannabis trademark applicants as to the scope of goods or services they can safely provide under a mark that is similar to an established brand without infringing.