11 Sep Marijuana Trademarks
Marijuana Trademarks (Registering a Cannabis-Related Mark with the USPTO)
Medical marijuana is currently allowed in at least half of the states and the District of Columbia. Of those, four states and the District of Columbia allow marijuana for recreational use, and it is projected that marijuana initiatives will appear on the ballots of at least twenty states in the November 2016 elections. This necessarily means that many marijuana-related businesses have sprung up in states where such activity is not prohibited.
These legitimate businesses have legitimate business issues, such as company formation, brand building, and intellectual property protection. However, marijuana use, whether medicinal or recreational, continues to be prohibited under federal law. Consequently, obtaining federal trademark protection for marijuana trademarks for these businesses may be an insurmountable barrier without the help of an experienced attorney.
Businesses often seek to build their brand and protect it with trademark registration in order to foster business. In the United States, there are two tiers of trademark protection: one at the federal level and one at the state level. Trademark registration at the state level gives the owner of the mark rights only within the state. Federal trademark registration, on the other hand, gives the owner of the mark trademark rights in all 50 states as well as in U.S. territories and possessions.
Although federal trademark registration is often preferred, it may be extremely difficult to obtain for marks that are used in connection with unlawful goods or services. It is important to consult with an attorney regarding which level of protection is right for your business.
The Controlled Substances Act (“CSA”)
The Controlled Substances Act (“CSA”) makes the manufacture, distribution, dispersal, and possession of marijuana unlawful under federal law. The CSA further makes it unlawful to sell drug paraphernalia, which includes “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].” Therefore, marijuana and marijuana-related products remain illegal under federal law, whether used recreationally or medicinally, despite many state laws stating otherwise.
How to Obtain Federal Trademark Registration
However, federal marijuana trademark registration may still be possible for marijuana-related marks when the goods and services are carefully described in a way in which they are not unlawful under the CSA. Examples of marks that have been registered by the U.S. Patent & Trademark Office (“USPTO”) include:
WEED (pouches for carrying electronic cigarettes; mouth pieces for electronic cigarettes; wicks for electronic cigarettes); ENJOY WEED (ashtrays; cigarette rolling papers; cigarette papers; smoking pipes; tobacco water pipes; lighters for smokers; tobacco grinders; tobacco jars); POTCORN (cereal based snack food; corn-based snack food; flavor-coated popped popcorn; glazed popcorn; popcorn; popped popcorn; processed popcorn; processed unpopped popcorn; snack mix consisting primarily of crackers, pretzels, and/or popped popcorn; trail mix consisting primarily of pretzels, popcorn, and crackers but not including marijuana in any such goods); MARIJUANA PHARMACEUTICALS PHARMACEUTICAL GRADE MEDICAL GRADE MARIJUANA (online advertising services in the field of marijuana-based products, namely, marijuana-based personal care products, anti-aging products, food and nutritional supplements, chewing gums, beverages, edible oils, candies, chocolate, coffee, confectionery, and vaporizers; 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-based products, namely, marijuana-based personal care products, anti-aging products, food and nutritional supplements, chewing gums, beverages, edible oils, candies, chocolate, coffee, confectionery, and vaporizers).
These examples demonstrate that it may be possible to obtain federal trademark protection for goods and services that are described as serving a purpose other than the manufacture, distribution, dispersal, and possession of marijuana.
Navigating the USPTO’s Requirements
Although federal registration may not be impossible, it can still be difficult to navigate without the help of an experienced attorney. Once an application is submitted for trademark registration, it is sent to an examining attorney at the USPTO who reviews it to determine compliance with relevant rules and statutes. If the examining attorney identifies problems with the application, he or she will issue a letter to the applicant explaining the basis or bases for refusal.
For businesses seeking to register a mark that may concern marijuana, an examining attorney may often issue an office action stating that the applicant must submit a written statement indicating whether the goods and/or services identified in the application comply with the CSA.
These statements are submitted under oath, and carry consequences under penalty of perjury. Further, it may be bad practice to have your attorney to sign the statement on your behalf because he or she likely does not have the requisite knowledge to swear as to the nature of your goods and services. Even when an office action contains no mention of the CSA, there are several other bases for refusal, including whether the mark is generic or descriptive or if it is likely to cause confusion with an existing trademark.
If a mark is not refused by the examining attorney, issues may continue to arise. An administrative process is available for third parties to formally challenge the validity of a pending or granted trademark before the Trademark Trials and Appeals Board. For example, a third party may allege that an applicant made material misrepresentations with the specific intent to deceive or mislead the USPTO in order to obtain registration for a mark when it knew it was not entitled to such registration. In other words, the validity of a mark may be questioned when a third party challenges whether or not your business activities comply with the CSA, and may make accusations of fraud on the USPTO.
Although federal trademark registration can often times be more favorable than at the state level, it can be challenging to obtain for marijuana-related businesses when medicinal and recreational marijuana use remains unlawful under federal law. An experienced attorney can help you through the process of choosing which level of trademark protection to choose, how to obtain registration and respond to refusals, and how to avoid charges of perjury and fraud on the USPTO.
Author: Anthony Cartee
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