USPTO Trademark Cancellation Petition: Protecting a Cannabinoid Brand's Core Mark

The Challenge

A Colorado-based hemp/CBD company had built a nationally recognized brand under a single-word trade name used in commerce since 2018. The brand was federally registered for dietary supplements but not for hemp-derived cannabinoids — a common gap in early hemp brand IP strategies given the USPTO's prior reluctance to register cannabis-adjacent goods.

In 2024, a competing registrant obtained a USPTO registration for a confusingly similar mark in the cannabinoid product class, then sent cease-and-desist letters to the client's top three wholesale distributors, claiming infringement. Two distributors suspended orders pending resolution. The client faced potential revenue disruption of approximately $1.1M per quarter if the distributor relationships were not restored quickly.

Our Approach

Cancellation Petition. Hoban Law Group filed a Petition for Cancellation before the Trademark Trial and Appeal Board (TTAB) on three grounds: (1) likelihood of confusion with the client's prior-use mark under §2(d) of the Lanham Act; (2) fraud on the USPTO — the registrant had made material misrepresentations in its Statement of Use regarding continuous commercial use in commerce; (3) the registrant's mark was merely descriptive under §2(e)(1).

Priority Evidence Assembly. We assembled a comprehensive priority file: client's 2018 first-use specimens (sales invoices, photographs of products in commerce), third-party press coverage, and consumer declarations attesting to brand recognition and confusion. The priority date predated the respondent's constructive use date by 4 years.

Distributor Communication. In parallel, Bob Hoban issued a written response to the competing registrant's attorneys asserting the client's priority rights and demanding that the cease-and-desist letters be retracted. We provided the client's wholesale distributors with a legal opinion letter summarizing the priority position — enabling both distributors to resume orders within 30 days pending TTAB resolution.

TTAB Briefing. We filed the opening brief and accompanying evidence compendium, incorporating consumer survey data demonstrating measurable confusion between the two marks in the cannabinoid market segment.

The Outcome

The TTAB granted the cancellation petition 11 months after filing, sustaining the likelihood of confusion ground. The respondent's registration was cancelled in full.

Both wholesale distributors fully restored the client's orders. Hoban Law Group then prosecuted a new federal trademark application for the client in the cannabinoid product class — a registration that was previously unavailable due to USPTO policy but became viable following the hemp-derived cannabinoid clarification guidance in 2023.

The client now holds two federal registrations: the original dietary supplement mark and the new cannabinoid mark, creating a comprehensive IP portfolio for its core brand.