“Just Say No” to Rejection of Marijuana Trademarks

by Winthrop & Weinstine, P.A.
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Overshadowed by that yuuuge, shocking, {insert adjective for your feelings here} win was the legalization of recreational marijuana in three more states – California, Massachusetts and Nevada – in conflict with federal law.  This comes at a time when there have been a number of successive decisions (here, here) affirming refusals of trademark rights for marijuana-related products and services based on federal prohibition of marijuana.

Although I follow the TTAB’s reasoning on affirming these rejections that if federal law prohibits the good or activity, then it cannot grant a federal trademark registration for a mark used on those goods or services, the Trademark Office has previously registered marks known to be used in connection with goods or services that may involve federal crimes.

We allow trademark registrations for marks known to be used for brothels.  See, for instance, BUNNY RANCH and MUSTANG RANCH, registered for among other goods and services “escort services.”

Online gambling was deemed under the Unlawful Internet Gambling Act of 2006, yet the Trademark Office has registered marks involving online gambling services. See, for instance, LUCKY NORTH, CASINO YOUR WAY!, BETDAQ, and others.

We allow registrations for marks, on their face, related to the cannabis industry and many for business services or educational services related to the industry.  Here are some examples of registered marks:

  • CANNSTANDARD for “Chemical preparations for testing the potency of cannabis and of food products made with cannabis”
  • GANJAPRENEUR for “providing an Internet website portal featuring current events information, news and commentary in the fields of cannabis, medical marijuana, hemp, and industrial hemp”
  • THE ORIGINAL AMSTERDAM and Design for among other goods and services, “herbs for smoking”

Given the number of states legalizing marijuana, I do not believe that this issue will persist much longer.  But in the interim, what can companies, and the attorneys advising them, consider doing when facing these refusals?

1) File for a obscure description of the goods or services, and be smart about your online presence.  In the TTAB decisions, some cutely used “herbs” in their description, but their web presence or their specimen clearly showed use of the mark involving predominately the sale of marijuana.

2) File an intent-to-use based application and keep it active until the law is changed at the federal level. If you do this, and you avoid any online use that may prevent the mark from being refused as discussed above, you can keep extending your application while preserving your earliest filing date for a period of three years as long as the necessary extensions are filed.

3) If the company is based overseas, obtain a registration in a foreign country and then use 44(E) as the basis for registration in the United States.  That’s how The Original Amsterdam filing, as well as several filings for online gambling services, appears to have circumvented the issue because they do not have to show use of the mark in order to obtain a registration.  Several of these affirmed refusals rely on the specimen of use, which is not a required filing for these marks until 6 years after registration.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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