Earlier this month, Circle K Stores Inc., owner and operator of the Circle K convenience stores chain, filed a notice of opposition against T MarB (Medical Trijuana, Inc.) against Medical Marijuana, Inc., a pending California company, a US federal trademark application for the following design mark (the “MM ‘K’ mark”):
The MM mark “K” was filed to cover the following services in Class 035:
Marketing advice in the field of botanical and hemp-based products, namely, hemp-based personal care products, anti-aging products, food and nutritional supplements, chewing gum, candy, beverages, edible oils and vaporizers; Retail services provided through direct advertising by a network of independent distributors and independent agents to end users of botanical and hemp-based products containing or of cannabis with a delta-9-THC concentration of not more than 0.3% by dry weight derived, are provided basis, namely non-medicinal hemp-based personal care products, non-medicinal anti-aging products and vaporizers; Online retail store for herbal and hemp-based products containing or derived from cannabis with a delta-9-THC concentration of no more than 0.3% on a dry weight basis, namely non-medicinal hemp-based personal care products, non-medically anti -Aging products and vaporizers.
Circle K holds a number of U.S. federal trademark registrations for Class 035 services (e.g., retail store services, grocery store services, restaurant services, and other distribution channels for the sale of personal care products, antiaging products, groceries and dietary supplements, chewing gum, candy , Beverages, edible oils, vaporizers, etc.), including the following “K” logo:
According to Circle K’s termination notice, the company operates nearly 10,000 stores in North America and thousands of stores in Europe and Asia. Kreis K claims that the MM mark “K” is so similar to the mark “Kreis K” that when used on or in connection with the goods indicated in the counter-application it is likely to “cause confusion, cause errors or to consumers about the source deceive the goods.
We have already written about the TTAB opposition process and talked about what TTAB opinions on cannabis typically look like. A trademark opposition is a process in which one party tries to prevent the registration of another party’s trademark (as is the case here). If a party believes that registering a trademark will damage them, they can appeal. The TTAB manual of procedures contains guidelines for TTAB procedures and the TTAB follows the federal code of civil procedure.
If an examining attorney approves a request for publication after filing for a U.S. federal trademark, that request will be published for denial for a period of 30 days. During this 30-day objection period, third parties can submit a notice of objection to TTAB, which will initiate the objection procedure. During the opposition period, third parties can also request extensions to file a notice of opposition, which gives them additional time to attempt settlement negotiations or initiate the opposition proceedings.
An objection procedure with the TTAB is similar to a legal dispute before a federal or regional court. The notice of opposition, which must be filed by an opponent, is similar to a complaint in that it contains the factual background of the case, the reasons for the opposition to the trademark application and the request for relief. Anyone who believes that they have been or will be damaged by trademark registration can file a complaint.
At this point in time, Medical Marijuana Inc. has not yet submitted a response, but we will follow up to see if it does. If they do not respond, a default judgment will be issued against them and their registration for the MM character “K” will be abandoned. This case is one of many in the long list of trademark litigation we’ve seen lately with large corporations and cannabis companies, and could help educate future cannabis trademark applicants of the scope of the goods or services they are sure to find under one Being able to offer a brand similar to an established brand without hurting.