Non-Traditional Marks


Barneys opens an upscale head-shop in Beverly Hills

“The new high-end head-shop concept that opened inside Barneys New York’s Beverly Hills flagship … [is] a high-profile harbinger of where cannabis related retail – and most likely the luxury department store space – is headed in the era of legal marijuana.” Los Angeles Times article, April 7, 2019 Cannabis on the high end, P4, by Adam Tschorn (“Cannabis on the high end, P4”).

high end photo

Photograph from

The shop “is elegantly appointed and stocked with a range of upscale smoking accessories such as hand-crafted stash jars from Siemon & Salazar; imported French rolling papers by Devambez (a gift set, complete with matchbooks, a rolling tray and a vermeil joint-packing tamper, will set you back a cool $8,850); functional jewelry (necklaces from Good Art Hlywd that double as vape-pen lanyards and a lip-shaped Carole Shashona ring that converts into a stylish joint holder); hemp-derived CBD beauty and wellness products; and an assortment of vintage Hermès and Gucci ashtrays.” Cannabis on the high end, P4.

Organically luxurious purple, green and blue fluorite gemstone pipes by Jan Leslie sold out  within days of their debut at The High End, in the Beverly Hills outpost of Barneys New York. "Fluorite has a long healing tradition," Leslie says. "Many healers use it to help access intuition and cultivate wisdom."

Jan Leslie Pipe (

French rolling papers by Devambez (

There is also “an on-site representative from Beboe, the Los Angeles-based luxury-level cannabis brand and partner on the project.” The representative “will explain the company’s products to the canna-curious and help him or her place an order for home delivery.” Cannabis on the high end, P4.

The article further notes that “[n]on-medical cannabis use has been legal … [in California] since the November 2016 passage of Proposition 64 (it remains illegal under federal law), and a January forecast by New Frontier Data projects that total statewide cannabis sales – estimated at $2.5 billion in 2018 – will nearly double (to $4.9 billion) by 2025.” This will have a “retail and cultural ripple effect” similar to “[w]hen MedMen made … [cannabis dispensaries] a brightly lit, inviting sea of blond wood more like Starbucks than the dicey dope dens of old …” This “signifies that cannabis doesn’t have to hide under the rug anymore …” Cannabis on the high end, P4.

Trademark Registration In the United States


In the United States use and trademark registration of cannabis products and services is complicated. Cannabis remains illegal at the federal level, and, consequently, a federal trademark registration is not available. Separately, 33 states allow cannabis for medicinal purposes with 10 states (Alaska, California, Colorado, Maine, Massachusetts, Michigan, Nevada, Oregon, Vermont, Washington, and Washington DC) also allowing cannabis for recreational use (see California now allows for state trademark registrations with caveats (noted below).

US Federal Registration

The USPTO does not grant federal trademark registrations for marks that violate federal law but does allow registration for ancillary lawful goods/services such as vaping pipes, clothing, and providing online information about cannabis.

USPTO Background: The federal government and, consequently the USPTO states: “if the record indicates that the mark itself or the goods or services violate federal law, an inquiry or refusal must be made.” TMEP §907 states in pertinent part that “evidence indicating that the identified goods or services involve the sale or transportation of a controlled substance or drug paraphernalia in violation of the Controlled Substances Act (“CSA”), 21 U.S.C. §§801-971, would be a basis for issuing an inquiry or refusal. CSA makes it unlawful to manufacture, distribute, or dispense a controlled substance; possess a Schedule I controlled substance; or sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia. … [R]egardless of state law, marijuana, marijuana extracts, and the psychoactive component THC remain Schedule I controlled substances under federal law and are subject to the CSA’s prohibitions. … These prohibitions apply with equal force to the distribution and dispensing of medical marijuana.”

This hard stance could be changing. Last September 2018, the DEA removed some CBD/THC products from Schedule I (see (“drugs including CBD with THC content below 0.1% are now considered Schedule 5 drugs … The action came three months after the FDA approved its first nonsynthetic, cannabis-derived medicine, a CBD preparation for rare types of epilepsy. …”)).

And in December 2018, the President signed the Agriculture Improvement Act of 2018 (“Farm Bill”) that, among other things, removes hemp (containing less than 0.3% THC) from the purview of the CSA. It is unclear at this point whether trademark applications will be accepted for CBD preparations as the FDA is still maintaining control over cannabis products (“we treat products containing cannabis or cannabis-derived compounds as we do any other FDA-regulated products … This is true regardless of the source of the substance, including whether the substance is derived from a plant that is classified as hemp under the Agriculture Improvement Act.” See See

Registrations for Ancillary Lawful Goods/Services: There are registrations on the Federal Register involving the sale of cannabis that bypass the requirements such as advertising for the product or providing ancillary products such as:

Reg. No. 5298522 CANNABIS FOR SALE for “advertising and directory services, namely, promoting the services of others by providing a web page featuring links to the websites of others; Providing a searchable online advertising website and informational guide featuring the goods and services of other vendors via the internet in the field of marijuana”;

Reg. No. 5489681Trademark image for “shirts; shirts and short-sleeved shirts; graphic T-shirts; hooded sweat shirts; long-sleeved shirts; short-sleeve shirts; sports shirts; T-shirts”;

Reg. No. 5212898 Trademark image for “software, namely, downloadable software in the nature of a mobile application for use in community engagement, social networking, education and sharing of information in the field of plant cultivation, specifically cannabis and cannabis cultivation; software, namely, downloadable software for personal computers for use in community engagement, social networking, education and sharing of information in the field of plant cultivation, specifically cannabis and cannabis cultivation”;

Reg. No. 5720567 Trademark image for “e-books featuring the topic of cannabis recorded on computer media” and “Printed books in the field of cannabis.”

Reg. No. 5459745 STATE FLOWER for “[b]usiness consulting services in the fields of holistic medicine and cannabis; providing a website featuring consumer information in the field of holistic medicine and medicinal cannabis.”

State Trademark Registrations

As of January 2018, the State of California is accepting trademark applications for cannabis goods and services with certain caveats (i) classification of goods and services are those adopted by the USPTO (as noted above, the USPTO does not accept applications for cannabis products but does accept applications for ancillary products); (ii) applicant is required to state whether it previously sought to register the mark with the USPTO and, if registration was refused, to disclose the reasons why it was refused at the federal level.”


The Cannabis industry is growing, particularly in those states where it is legal for medicinal and recreational purposes (e.g., $2.5 billion in 2018 in California alone) and as shown by an uptick in the luxury retail space (e.g., Barney’s recent opening of a high-end head-shop in Beverly Hills).

However, as long as Cannabis is not legal at the federal level, registration of trademarks on both the federal and state level will be problematic for the product itself but, as shown above, ancillary goods and services can be protected. For example, under the current circumstances, Barney’s could possibly obtain a registration for THE HIGH END covering retail store services including the offering of upscale smoking accessories, French rolling papers and jewelry. Registration would not be available for cannabis products. These circumstances could be changing with the recent decision by the DEA and the passing of the Farm Bill but it is unclear, at this point, how it will play out. To be continued!

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Proud Pour applied for a mark on December 15, 2017 that consists of a 3D “product packaging, which is an oyster shell that is hung from the neck of a wine bottle. The oyster shell has a hole made in it and is hung from the neck of the bottle by twine, string, a rubber band, or other similar item. The hole made in the oyster shell, the item or method used to hang the shell, and the wine bottle are not part of the mark. The broken lines depicting the hole, the item used to hang the shell, and the wine bottle are intended to show the position of the mark and are not part of the mark.”

Oyster inset

The drawing and mark in context of the wine bottle as follows:

                                    Oyster mark


The USPTO added the following design codes to the application:

03.19.18 – Conch shells;Nautilus;Sand dollars;Scallops;Shells, including sand dollars, nautilus, conch shells and scallops 

Sample drawings for design code 03.19.18

19.09.03 – Bottles, jars or flasks with straight, vertical sides;Flasks with straight or vertical sides;Jars with straight or vertical sides [Not claimed as part of the mark]

A search of 03.19.18 in connection with wine reveals the following:

Mark Image          Mark Image  Mark Image


There is also a design code that covers Oysters: 03.19.12 – Clams; Mollusks; Oysters

Sample drawings for design code 03.19.12

A search of 03.19.12 in connection with wine reveals the following:

Mark Image             Mark Image              Mark Image


No office action issued and a registration (U.S. Reg. No. 5519295) issued on July 17, 2018.

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Building design

The Perot Museum originally applied for the mark described as “a three-dimensional configuration of a building” in connection with “[e]ducational services, namely, conducting programs in the fields of nature and science; Museum services; Party and wedding reception planning and coordination services; Special event planning, coordination and consultation services for social entertainment purposes.”

After the filing, the USPTO issued a design code –  07.03.25 Other buildings, including schools, hospitals and libraries. Examples are:

Sample drawings for design code 07.03.25

Also found with this design code and “educational services”;

Mark Image  Mark Image  Mark Image  Mark Image  Mark ImageMark Image  Mark ImageMark Image

The Examining Attorney issued an office action citing two issues required to be resolved: (i) a new drawing; and (ii) new mark description. In response, the Perot Museum provided the following:

Updated drawing – e.g., disclaiming the stairs and showing the stairs and under structure in dotted lines:

And a more detailed description:

The mark consists of a three-dimensional configuration of a building. The top portion of the building features a cube-like design with a partial triangle cut out of one corner. In front of the triangle is a rectangular bar design featuring squares and rectangles. Below the cube design features an abstract shape. The right side is rectangular, with one corner of the rectangle extending out onto a pointed tip. The left side is triangular, with the bottom section featuring a zig-zag-like design. The outer portion of the building is covered with quadrilaterals, squares, rectangles and triangles. The areas depicted in dotted lines are not a feature of the mark and are intended to show the placement of the mark.

Both updates were accepted and a registration (U.S. Reg. No. 5426520) issued on March 20, 2018 for the 3D Building Configuration.

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Mary Aversano Leads INTA Table Topic on “Gesture Marks”

TSA62 – Gesture Trademarks: Non-Traditional Mark Protection in the United States

Saturday, May 20, from 1:15 pm – 3:15 pm

Moderator: Mary B. Aversano, Aversano IP Law, United States

Introduction – In the United States, a non-traditional trademark (NTM) is a mark other than the conventional word or 2D logo mark, and can be shown in many formats such as 3D, color, sound, motion and including gestures. A “gesture” as defined by the Merriam-Webster dictionary is “movement usually of the body or limbs that expresses or emphasizes an idea, sentiment, or attitude [e.g., he] raised his hand overhead in a gesture of triumph …”

To view the entire outline click 2017 INTA Table Topic Gesture Marks Outline.

A few observations:

  1. USPTO codes “gesture” marks with two different design codes, (i) 02.11.14 “[h]ands and fingers forming the following: handshake, finger pointing, fingers walking, OK sign, and thumbs up or thumbs down;



and (ii) 2.11.07, “hands, fingers and arms.”


  1. USPTO Design Search Code Manual currently does not make a distinction between   2D or 3D designs.
  2. There are 18,000 + mark assigned a gesture design code
  3. Prosecution of gesture marks is consistent with prosecution of other marks. See App No. 86/553,544. The application was refused registration in view of prior             registrations for similar gesture marks.

hand WWE


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FD of EWaI applied for a 3D “rule booklet consisting of the color red that is consistent across the front and back covers … with the words “MY LITTLE RED RULES BOOK” on the front cover. The solid lines show the positioning of the mark on the goods and those features claimed by … [FD of EWaI] as its mark” to be used in connection with, “[b]ooklets in the field of select legal rules and statutes primarily for use by criminal defense lawyers practicing in the United States federal district courts (and by some federal judges).” The colors red and white are claimed as a feature of the mark. Below is a specimen, a photograph of the 2014 booklet:

Red book cover

Below is the drawing depicting the mark as applied for by FD of EWaI:

The USPTO assigned the design code 20.05.0 that covers “open books” as follows:

20.05.05 – Bibles (open)
20.05.05 – Books that are open
20.05.05 – Cook books (open)
20.05.05 – Encyclopedias (open)

A search of 20.05.05 reveals marks containing an “open book” design:

Mark Image  Mark Image   Mark Image    Mark Image

A search of 20.05.05 and “legal” pulls up the following:

Mark Image  Mark ImageMark Image

And with “red” color:

Mark Image    Mark Image      Mark Image

The Examining Attorney issued an office action with two objections:

1. Single Title of Work: application shows a single title of work which is not registrable in the United States. That is, “[t]he title of a single work, even an arbitrary title, is considered descriptive of the contents of the work itself ‘and is not associated in the public mind with the publisher, printer or bookseller;’ whereas ‘[t]he name for a series, at least while it is still being published, has a trademark function in indicating that each [work] of the series comes from the same source as the others’”; and

2. Drawing:  FD of EWaI “must depict the mark in the drawing to include broken or dotted lines to show the position of the mark on the goods.”

In response FD of EWaI provided a new mark description (“… [3D] configuration of a booklet with a red front cover and red back cover and the words “MY LITTLE RED RULES BOOK” in white on the red front cover. The broken lines depicting the outline, spine and pages of the booklet indicate placement of the mark on the goods and are not part of the mark”) and a new drawing:

FD of EWaI also addressed the “single title of work” objection by submitting evidence that the book is a series of books, at least, from 2007 to 2016:

After acceptance of the above and a disclaimer of “red rules book,” the application was approved and a registration (U.S. Reg. No. 5198040) issued May 9, 2017.

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Claire Flowers applied for a shoe design that “consists of a pink heel cap on women’s high heel footwear that contrasts with the color of the heel and sole of the shoe. The dotted lines are not part of the mark but are intended only to show placement of the mark.”

The drawing of the mark is below left and a sample of the footwear to the right.

Drawing pink heelBLK shoes Pink heels red shoe7


After submission of the application, the USPTO assigned the following 09.07.06 – Other women’s shoes. A search under this design code revealed:

gold sole shoe pink shoe2   heel shoe4  pink shoe5pink shoe3   pink shoe4  red sole shoebw sole shoe    green shoe5


And 09.07.08 – Heels, shoe; Supports, arch; Arch supports:

red shoe5   green shoe6  pearl shoe6 red shoe6


The Examining Attorney also searched under 29.03.01 Single [red or pink] color used on a portion of the goods or on a portion of items used in rendering the services which revealed:

red mark1     red mark2  red mark3   red mark4red mark5


After the search, the application was approved for publication. No office action issued! Registered in 7 months from application (U.S. Reg. No. 5171367).

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HM Electronics applied for a 3D Headset Design described as, “a portion of a headset. The broken lines depicting elements of the headset indicate placement of the mark on the goods, but are not part of the mark as shown” and submitted the drawing and specimen below:




The USPTO assigned the design code – 16.01.07 – which covers headphones, headsets, microphones. A search under this design code reveals:


Mark Image  Mark Image  Mark Image


Mark Image  Mark Image  Mark Image


Mark Image Mark Image Mark Image

Trademark image     Mark Image    Mark Image  Mark Image


The Examining Attorney issued an office action with several objections: (i) non-distinctive product design and (ii) functionality; as well as drawing and description clarification. HM Electronics responded and the non-distinctive product design was withdrawn but the other issues remained and a second office action issued. The remaining issues were resolved and the application was approved for publication.

The mark description was modified to read: “[t]he elements of the mark are the button overlay, including the overlay shape, button openings and button opening layout, the casing shape, including the generally circular case and the curved upper part and the boom connector, including the rounded disk and cylindrical protrusion. The broken lines depicting the over-the-head band, the ear cushion, the buttons, and the boom microphone indicate placement of the mark on the goods and are not part of the mark.” Along with a revised drawing:

Original                                                              Revised


However, the application was withdrawn from publication on the grounds that the acquired distinctiveness claim was less than 5 years. This seems to be a new trend with the USPTO. In the past, the 5 year prima facie rule could be bypassed with additional evidence. That is, an applicant could show acquired distinctiveness in <5 years with an abundance of evidence. But recently, applications with < 5 years, are being returned to the Examining Attorney for further analysis.

In this case two more office actions issued with the Examining Attorney stating, “[i]n the present case, applicant’s evidence consists of the following nearly 5 years use, declarations, sales and advertising figures, advertising materials and consumer recognition reports.  This evidence is insufficient to show acquired distinctiveness of the proposed mark because of the limited amount of years in use (less than five years). Additionally, the marketing and advertising does not specifically point to or reference the ‘distinctive’ flower design, nor does it feature  ‘look for’ marketing evidence that touts the flower design.  Additionally, the consumer recognition evidence only consists of 1 affidavit from an actual customer (McDonald’s Manager), which is not sufficient to show consumer recognition to establish acquired distinctiveness.”

HM Electronics continued to provide additional declarations and information as requested from the Examining Attorney. In its last submission, several of the advertisements for the 3D Headset Design contained the requisite “look for” advertising at the bottom of the page, i.e.,  “EOS | HD = Look for the unique earpiece design”. In many applications and in this case, evidence of the “look for” advertisement can be the “key” tipping point for demonstrating that the “mark” does function as a source identifier.

After submission of the additional information, the application was approved for a second time and a registration (U.S. Reg. No. 5144104) issued February 21, 2017.

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