It is well known that the U.S. Patent and Trademark Office (USPTO) does not allow federal registration for cannabis-related trademarks (discussed by this blog here and here). Some commenters have speculated that, because courts have been chipping away at the bans on immoral, scandalous, and disparaging trademarks, the ban on federal trademark registrations related to illegal activity may be next.
It is important to note that the Supreme Court decision in Matal v. Tam, which held the restriction on disparaging trademarks was contrary to the spirit of the First Amendment, and the Federal Circuit ruling in In re Brunetti, which struck down the ban on immoral and scandalous trademarks, were both related to specific provisions under Section 2(a) of the Trademark Act. In contrast, the ban on trademarks for illegal activity is based on a long history of courts interpreting a fundamental definition of federal trademark protection and finding that registrations can only be granted to trademarks being used in connection with “commerce which may lawfully be regulated by Congress.” Unlike Tam and Brunetti, a court cannot simply say, “this law banning trademarks for illegal activity doesn’t work for us anymore,” so turning the ship around for cannabis-related trademark registrations will involve untangling years of precedential decisions.
In 2017, a trademark applicant attempted to argue that, because some states have legalized marijuana, especially medical marijuana, and because the Department of Justice does not generally treat medical marijuana as a violation of the Controlled Substances Act (CSA), that the USPTO should not consider medical marijuana services to be unlawful. The Trademark Trial and Appeal Board held that, so long as marijuana is a Schedule I controlled substance, the Board will consider the distribution and dispensation of marijuana to be unlawful, and will deny registration for marks used in connection with the sale of marijuana.
Despite this restriction, cannabis-related marks do find their way onto the registry. For example, there is a federal registration for U.S. WEED CHANNEL for broadcasting services, and the mark contains a lovely marijuana plant leaf in the background. The owner of the registration provides educational information related to marijuana, but does not offer actual marijuana for sale. Accordingly, the owner simply had to submit a statement that their activities comply with the Controlled Substances Act, and the USPTO granted the registration. There are dozens of similar registrations where the goods or services are tangential to sales of marijuana. As another example, there are several registrations related to a service called Weed Maps that helps consumers find dispensaries and provides information and reviews of various marijuana brands (side note: has Amazon seen this logo?). Even though you can find a dispensary using Weed Maps, the service itself doesn’t offer marijuana for sale, so the activity is legal.
For business owners who grow, distribute, or dispense marijuana and cannot get federal registrations, all is not lost. Some states offer state trademark registrations that confer exclusive regional rights (although many state trademark laws are toothless), and so far there is no case law prohibiting cannabis business owners from enforcing unregistered trademark rights in federal court. A rights owner without a federal registration needs to be a little more diligent in enforcing its rights, because unregistered rights are limited to the geographical scope in which the trademark is actually in use. For example, a grower who only does business in Colorado and Arizona may not have rights to enforce against a grower in California with a confusingly similar name. All trademark owners have an obligation to police their rights, but cannabis business owners may need to be on higher alert.