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
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