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.
Almost a year later, the Board issued another important precedential decision, see In re PharmaCann LLC, 123 USPQ2d 1122 (TTAB2017). The Board affirmed refusals to register the marks PHARMACANN and PHARMACANNIS for retail store services featuring medical marijuana. The Examiner declared that the activities were a per se violation of the Controlled Substance Act. The TTAB set forth that it has a history of requiring the use be lawful. See In re JJ206, LLC, 120 USPQ2d 1568, (TTAB 2016), where it was held that marks for cannabis paraphernalia, both vaporizing and delivery devices, were refused for lack of lawful use in commerce. Regarding applications filed on a 1(b) basis, if the goods and services are illegal under federal law, then the applicant cannot have the requisite bona fide intent for lawful use in commerce. The Board concluded in In re PharmaCann that the activities were per se violations of the federal law, and thus affirmed the refusals to register the marks in international classes 35 and 44.
For the time being, there will be no federal trademark registrations for goods or services associated with marijuana businesses if those goods and services violate the Controlled Substances Act. However, I imagine that the pressure to declassify marijuana as a Schedule I substance will continue. An example of the ongoing pressure was a lawsuit filed last summer in the Southern District of New York challenging the constitutionality of the Controlled Substance Act in relationship to marijuana. The plaintiffs included a war veteran, a child with a seizure disorder and an ex-NFL player who needed marijuana for medical purposes.
However, keep in mind that you can register marks at the USPTO for other goods and services related to marijuana businesses that do not violate the Controlled Substance Act. Some examples include but are not limited to: (1) providing consumer information or online information regarding the health benefits of medical cannabis; (2) providing a website featuring information related to the cannabis industry; (3) smokers’ articles, namely, rolling papers and herb and tobacco grinders, if you indicate none of the foregoing is for use with cannabis; (4) apparel and like items; and (5) hosting entertainment events and seminars in the field of cannabis. Since it has been reported that the cannabis industry is one of the fastest growing industries in the U.S., interest from a branding perspective will continue to exist. If you have questions concerning this topic or other trademark inquiries, please contact us for a courtesy consultation.