To qualify for a federal trademark registration, the use of a mark in commerce must be “lawful.”
But the federal Controlled Substances Act prohibits, among other things, manufacturing, distributing, dispensing or possessing certain controlled substances, including marijuana. In addition, the Controlled Substances Act makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia.
In a recent example, Morgan Brown sought to federally register the mark Herbal Access for retail store services featuring herbs. The U.S. Patent and Trademark Office (USPTO) denied registration for the mark based on the application containing a violation of federal law. The trademark examiner refused registration of Brown’s mark because the herbs offered for sale in Brown’s retail store included marijuana, a substance that cannot be lawfully distributed or dispensed under federal law.
Brown appealed to the Trademark Trial and Appeal Board (TTAB), which held that it was entirely proper for the trademark examiner to look at evidence, such as the specimen of use and website, to ascertain that the word “herbs” in the description of services encompassed marijuana.
The TTAB also held that the specimen and the webpage, taken together, support the conclusion that Brown is engaged in the provision of marijuana. The TTAB stated that the provision that a product or service may be lawful within a state is irrelevant to the question of federal registration when it is unlawful under federal law.
The TTAB concluded that Brown’s services included the provision of an illegal substance — marijuana — in violation of the federal Controlled Substances Act and Brown’s use of Herbal Access as evidenced by the record, included unlawful activity under the Controlled Substances Act.
In light of the decision regarding Herbal Access, it must be clear from the application and other evidence such as a website that the goods or services are indirectly related to cannabis and would be a lawful use in commerce. The USPTO will continue to examine applications related to lawful use in commerce and will probably inquire into applicants’ activities as to whether they are lawful.
Goods such as clothing will not violate the Controlled Substances Act and registration will be available. However, if the goods specifically cover cannabis or products related to the use of cannabis, they will violate the Controlled Substances Act and federal registration will not be available.
Several states have approved legal medical or recreational cannabis. As a result, there are trademark opportunities available at the state level. For example, Michigan, Washington, Oregon and Colorado allow state trademark registrations for marijuana-related goods. Therefore, if you are doing business in one of these states, you should file a state trademark registration and obtain your registration on a state level.
However, what if your state does not allow for state trademark registration for cannabis-related marks? What other forms of trademark protection are there?
In the United States, common law trademark rights can be obtained based on the geographical extent of the use of a mark regarding the goods and services. To acquire common law trademark rights, there is no lawful use requirement and the trademark does not have to be used in interstate commerce.
Common law trademark rights can be enforced against third-party infringers under state law or under Section 43(a) of the Lanham Act, which allows unregistered or common law marks to be enforced by bringing an infringement action in federal court. Section 43(a) does not expressly state or imply that there is a lawful use requirement in commerce. As such, you can obtain and enforce common law trademark rights based on use.
Cannabis brand trademarks can be federally registered depending on the goods and services.
If your goods and services are indirectly related to cannabis, you can obtain a registration from the USPTO. If your goods and services are directly related to cannabis, you may be able to obtain a state trademark registration if your state is one that allows medical or recreational cannabis.
However, if you live in a state that does not allow for state trademark registration for cannabis-related marks, you can acquire common law trademark rights based on your use and enforce them against infringers in either state or federal court. Therefore, it is recommended that you register your trademark rights, if possible, with the USPTO and the state in which you live, if permitted.
Dan Bliss is a business attorney at Howard & Howard. He manages all phases of intellectual property litigation. He also focuses on trademark rights and has extensive experience in preparing trademark opinions and prosecuting trademark applications. He can be reached at email@example.com.