Several states have legalized the cultivation and sale of marijuana. The legal landscape for pot purveyors is complicated, to say the least, by the fact that marijuana is a controlled substance under federal law. The Controlled Substances Act prohibits, among other things, growing, transporting, selling, buying, and using marijuana, i.e., the activities which define the cannabis industry. The CSA has also, effectively, prevented the federal registration of trademarks for marijuana and paraphernalia.
A trademark can’t be registered in the Patent and Trademark Office unless it is in lawful use in commerce. Therein lies the rub. A trademark for marijuana or paraphernalia can’t be registered today. Nonetheless, it is possible to register marijuana trademarks for related items, such as clothing and food, and for services like consulting and providing web based forums for goods and services in the cannabis industry.
In previous trademark tidbits, I have trumpeted the importance of registering trademarks. However, in the US, rights to a trademark are established, under federal law and state law, by using a trademark on a product. This common law trademark right gives marijuana trademark owners a remedy against infringement in state courts in states that have legalized marijuana. Trademark attorneys continue to come up with clever new schemes for protecting trademarks used in the marijuana industry. However, federal registration of trademarks for any controlled substance is still prohibited.
In some recently filed trademark applications, applicants have described their products vaguely so as to camouflage the fact that they are trying to register a trademark for marijuana. For example, some have applied to register trademarks for medicinal herbs. The Patent and Trademark Office has the right to request information about products listed in a trademark application. Failure to adequately respond to such a request is grounds for refusing registration. Here is a typical request for information:
“Applicant must submit a written statement indicating whether the goods and/or services identified in the application comply with the Controlled Substances Act (CSA), 21 U.S.C. §§801-971. See 37 C.F.R. §2.69; TMEP §907. The CSA prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and marijuana-based preparations. 21 U.S.C. §§812, 841(a)(1), 844(a); see also 21 U.S.C. §802(16) (defining “[marijuana]”). The CSA also makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., “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].” 21 U.S.C. §863.”
Privateer Holdings Inc. is creating a line of Bob Marley-inspired cannabis under the brand name “Marley Natural.” There are three pending applications for federal trademark registration of Marley Natural for not marijuana. One application seeks registration of this mark for “chocolate; chocolate bars; confectioneries, namely, chocolate; food flavorings; sauces; granola-based snack bars.” A second application seeks registration of Marley Natural for “cosmetic and beauty care preparations for skin, body and hair care” and a third application lists “smoking accessories, namely smokeless cigarette and cigar vaporizer pipes, electronic cigarette refill cartridges sold empty, tobacco grinders, tobacco smoking pipes, tobacco filters, tobacco pouches, and ashtrays.” In my opinion, these marks are likely to be approved for registration for these not marijuana products.
Although Marley Natural will not be registered for marijuana any time soon, registrations for the ancillary products mentioned above would provide significant protection for the Marley Natural trademark.
The laws concerning marijuana are changing at a dizzying pace. Ohio House Bill 33, for example, is concerned with legalizing the medical use of cannabidiol for the treatment of epilepsy. Regardless of whether you are for or against legalizing the use of marijuana, medicinally or recreationally, it’s going to be hard to ignore the legal developments, trademark and otherwise, that lie ahead.