Whether operating in states that allow medical marijuana like Arizona or in states that allow it both medically and recreationally like Colorado, business owners in the marijuana industry want to protect their brands just like any other business. Unlike other industries though, the marijuana industry still exists in a legal gray area due to conflicting state and federal laws. As such, protecting marijuana related trademarks requires different legal strategies and methods.
Under the Controlled Substances Act (“CSA”), Marijuana remains an illegal Schedule 1 drug. Because “lawful use” of a trademark in commerce is a requirement for federal registration, the U.S. Patent and Trademark Office (“USPTO”) currently refuses to register trademarks for any products containing marijuana or its extracts, marijuana wholesale or retail services, or “drug paraphernalia” used to inhale or otherwise introduce illegal drugs into the human body.
With these limitations in place, are businesses in the marijuana industry simply out of luck until federal law and USPTO policies change? Not entirely.
Although the USPTO currently refuses to register trademarks for marijuana products and services, owners can register marijuana related trademarks for various ancillary goods and services. For example, a number of marijuana industry businesses have applied to register marks for clothing products like hats and t-shirts. For this strategy to work though, the brand owner should actually be selling these ancillary goods or services in commerce in their own right.
Every U.S. state has its own trademark registration system that is separate from the USPTO. While each individual situation will differ, brand owners generally can apply to register their marijuana trademarks in states where they legally sell their trademarked products or services and that allow for registering marijuana related trademarks. For example, Colorado, Oregon and Washington already provide for the registration of marijuana related trademarks. Although state trademark registrations are narrower and less protective than federal registrations, they still come with a number of important legal benefits and are valuable as such.
While the lack of a federal trademark registration doesn’t normally prevent trademark owners from suing in federal court under certain circumstances, it remains to be seen how federal courts will handle trademark infringement lawsuits brought by marijuana trademark owners given the CSA, other federal laws, and the USPTO’s current position. To avoid these uncertainties, marijuana trademark owners could instead opt to use state courts to enforce their trademarks by filing suit under common law and/or state statutes (at least in states where recreational and/or medical marijuana is lawful).
Apart from trademark protection, brand owners can also benefit from other forms of intellectual property protection such as under copyright, patent and trade secret laws. For example, a logo mark used for marijuana products or services may be protectable under copyright law, even if that same logo isn’t eligible for federal trademark registration. As another example, someone who invents a useful, new, and nonobvious method of extracting products or materials from the cannabis sativa plant could apply for patent protection.
Like the eventual end of alcohol prohibition in 1933, some predict that marijuana will eventually be legal at the federal level once enough states have legalized it. Until then, business owners will want to protect their marijuana related trademarks by using strategies like those discussed above. Doing so will not only better protect their valuable intellectual property rights now; it will better position them for the future.