While more U.S. states will consider marijuana legalization in 2018, the United States Patent & Trademark Office (“USPTO”) remains steadfast in refusing registrations to cannabis-related marks, when the goods or services will violate the federal Controlled Substances Act. Since about 1970, marijuana has been classified as a Schedule I drug under the Controlled Substance Act. In the mid 1990s some states started to allow marijuana for medical use, and in 2012 Colorado and Washington were the first two states to permit marijuana for recreational use (other states have followed). This leaves a difficult situation for marijuana related businesses because the state and federal laws are at odds.
For a trademark to mature to registration, the use of the mark in commerce must be lawful. If the products or services are illegal under federal law then, use of the mark will not be lawful in commerce. This means an applicant would not be able to file either a 1(a) use application or a 1(b), intent-to-use trademark application with the USPTO if the goods or services were not lawful. If the Examining Attorney believes the goods or services are marijuana related, additional inquiries will be made, and a detailed factual description of the goods and services will be required. In addition, the applicant will need to confirm that all the goods and services comply with federal law, including the Controlled Substances Act. The trademark applicant will also be asked if the identified goods and services involve the possession, sale or provision of marijuana, marijuana based preparations, or any marijuana derivatives. Lastly, there will be an inquiry as to whether the goods and services are lawful pursuant to the Controlled Substances Act.
The TTAB issued an important precedential decision in July 2016, see In re Morgan Brown, 119 USPQ2d 1350 (TTAB 2016) [precedential]. The Applicant applied to register the mark HERBAL ACCESS for retail store services featuring herbs. However, evidence demonstrated that the Applicant’s services included using the mark to also provide marijuana which is an illegal substance and is in violation of the federal Controlled Substances Act. The problem was that the wording of the identification in the trademark application included “herbs” and marijuana is an herb. Therefore, the goods included the sale of a good that is illegal, and thus use is unlawful.