“Budding” Trademark Issues

The U.S. Patent and Trademark Office (“USPTO”) defines a trademark as “a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of oneparty from those of others.” Benefits of a registe red trademark include, but are not limited to, evidence of ownership of the trademark, constructive notice of the trademark, federal court jurisdiction, and treble damages and attorneys’ fees.

A requirement to register a trademark with USPTO is that the use of the goods or services subject to the trademark must be lawfully used in commerce. Additionally, federal law bars registration in the United States of trademarks that consist of or comprise “immoral, deceptive, or scandalous matter.” Confusion arises with marijuana products, which are legal in some states, but not legal under federal law. Laws regarding the production, sale and use of marijuana differ greatly from state to state, and is still changing since California first voted to legalize marijuana for medical use in 1996. Currently, 25 states have legalized marijuana for medical use, but only 4 states and Washington D.C. have legalized marijuana for recreational use. The relative morality of marijuana use (both medical and recreational) and the associated scandal is currently in a state of flux and opinions and laws differ greatly from state-­to-state.

The natural question for those engaged in the “budding” marijuana industry is, “Can I get federal trademarks for goods or services pertaining to marijuana?” The answer at this time is, “no.” Though 3 more states will vote on whether to legalize marijuana for medical use, and 5 states (including California) will vote on whether to legalize marijuana for recreational use this November, the federal government is still steadfast on its stance that marijuana is an illegal drug. Marijuana is classified as a Schedule I illegal drug under the federal Controlled Substances Act (“CSA”), which declares it has “no currently accepted medical use and a high potential for abuse.” Schedule I drugs are illegal to trade in interstate commerce and therefore fail to meet the prerequisite for a federal trademark. While the USPTO will not register trademarks for products containing marijuana, it will consider ancillary goods and services that are legal under the CSA. For example, the sale and marketing of a “tobacco pipe” is perfectly legal and such a product can obtain a registered trademark. Under the CSA, it is illegal to sell or use “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.”

Federal trademark protection is not the only way to protect the intellectual property rights for goods and services. The following alternatives, while not as strong as a registered federal trademark, offer trademark protection:

Common Law Trademarks
. While federal registration makes it much easier to protect trademarks, it is not required to protect and enforce trademark rights. Common law rights can be created by an owner who simply creates and begins using a particular trademark in commerce.

State Trademarks
. Many states allow for registration of a state trademark for the production and sale of marijuana good or services. Colorado is one example