“Registration is refused because the applied-for mark is not in lawful use in commerce, or the applicant lacks a bona fide intent to use the mark in lawful commerce.” These are the opening words to hundreds of Office Actions issued by Examining Attorneys at the United States Patent and Trademark Office (USPTO) in connection with trademark applications that identify (or, in some cases, could identify) cannabis related goods.
In response, applicants, their attorneys, and legal scholars have penned thousands of pages of arguments. Everything from narrowing the scope of the goods to arguing that the USPTO has incorrectly interpreted the importance of the term “lawful commerce” to arguing that the USPTO has overstepped its authority in presuming to engage in statutory interpretation.
None of them have worked, and the exceptions that savvy business owners and attorneys managed to carve out (such as the so-called “hemp loophole”) have eventually been closed off by the USPTO or Congress. And yet the future is looking brighter than it ever has for cannabis related trademarks.
Last week’s order from the Attorney General rescheduled a broad swathe of cannabis, seemingly instantly moving those products from Schedule 1 to the much more relaxed Schedule 3. While parsing the order will take more time and the federal government must put systems in place to carry out the process outlined in the order, one thing is becoming clear. The “no lawful use” refusal no longer applies to a great many trademark applications.
Put simply, since there is now an avenue to lawful commerce regarding cannabis, there is also now an avenue to obtaining trademark protection for that cannabis. Establishing that a given use of a trademark is lawful (and thus obtaining a trademark registration) may require jumping through quite a few hoops, but what just two weeks ago seemed impossible is now potentially within reach.
To be clear, there are many open questions. Will a company need a DEA license to be engaged in “lawful” commerce involving cannabis? How will interstate commerce (one of the foundational requirements for a federal trademark) be addressed? What about other products besides the actual cannabis plant?
The landscape is changing so rapidly that not even the USPTO can readily provide the answers to these questions. However, the Cannabis and IP Teams at Greenspoon Marder are leading the charge on finding the answers to these questions and developing novel strategies for our clients to navigate the strange new world we find ourselves in. Together, we have decades of experience at the forefront of emerging and evolving law, and we are prepared to explore the possibilities of rescheduling together.
To learn how these developments may affect your business and intellectual property strategy, contact me at [email protected].
