By: Sharon Urias, Esq.
There has been a growing movement throughout the United States to legalize marijuana. This of course is being led by the states, not the Federal Government. And, regardless of what side of the issue you are on, the marijuana business no longer is predominately behind-the-scenes and conducted on street corners. Since the first state legalized the use of medical marijuana (California, via the Compassionate Use Act of 1996), the production and sale of marijuana increasingly has become a legitimate, mainstream industry. Marijuana not only is fully legal and available for medical use in twenty-five (25) states, but now eight (8) states and the District of Columbia have legalized recreational use of the drug as well. This growing industry means that business is booming, and when business booms, the need to protect and regulate trademarks becomes necessary and important.
For entities seeking trademark registration, enforcement and protection, there are serious complications. While individual states may offer common law trademark rights and state law trademark registrations, the U.S. Patent and Trademark Office (“USPTO”) refuses to register any trademarks loosely or directly linked and associated with marijuana because under Federal Law, marijuana remains illegal under the Controlled Substances Act. The Lanham Act prohibits the registration of trademarks for “unlawful” uses; and the USPTO therefore refuses to register marks for marijuana-related brands.
On November 1, 2016, before the recent election that saw an increase in state legalization of recreational marijuana, the Trademark Trial and Appeal Board ruled that it would continue its position of refusing to register marks for marijuana and associated products. Proponents of federal trademark registration for marijuana point to the loose enforcement of laws in cannabis-legalized state jurisdictions by the U.S. Department of Justice, but the USPTO will not facilitate trademark registration under that line of reasoning. The distribution and sale of marijuana still is a serious crime under Federal Law, and abiding by Federal Law is supreme in the eyes of the USPTO.
So, what do owners of marijuana businesses and products do to protect their brands under this present predicament? On a local state level, they can protect their marks through local laws, but if another entity or person in a neighboring state with legalized marijuana infringes upon a mark, there is little that can be done to stop the infringement. Some cannabis businesses have attempted to manipulate the system by registering their marks for other non-cannabis goods and services that they provide, or are evasive about associations to marijuana in their trademark applications, but the USPTO may very well catch on, as it did in June 2016 when it denied a marijuana dispensary’s application for a trademark, even though the business owner never mentioned or referred to marijuana in the application.
If you are a business owner in the marijuana industry, it is important to understand the considerable obstacles to protecting your mark. At the very least, you should consider consulting with an attorney to determine whether state trademark (or trade name) protection is available and whether you should consider using the ™ symbol in association with your brand in an attempt to seek Lanham Act protection.
At some point, the federal courts will be forced to consider this issue as the groundswell in support of marijuana legalization continues to grow. As it now stands, however, the USPTO undoubtedly will deny any application for trademark registration of a marijuana-related mark. If and until marijuana is legalized on the federal level, do not expect any amendments to the USPTO’s restrictions and use your mark at your own risk!
