By Colleen Hannigan
When Washington voters passed Initiative 502 in 2012, they not only legalized non-medical marijuana use by Washington adults — they also opened the door to a rapidly-expanding marketplace of marijuana-related businesses. This column will describe how U.S. intellectual property law may apply to marijuana and related products, and the businesses that provide them.
It will answer questions about copyright law, which protects original works of authorship from unauthorized copying or display; patent law, which creates ownership rights in and protects unique processes, methods and inventions; and this month’s topic, trademark law, which manages rights to use words and designs to identify the source of goods and services in commerce.
What is a trademark? A trademark is a brand or logo. It can be a word, phrase, symbol, design or combination of words and designs that identifies the source, producer or sponsor of a specific good or service.
A valid trademark entitles its owner to stop others from selling similar goods or services using the trademark or one that is confusingly similar. Although technically “trademark” refers to marks used with goods, and “service mark” refers to marks used with services, most understand “trademark” to also refer generally to trademarks and service marks.
How are trademarks protected? Generally, trademark owners in the U.S. may establish their trademarks in three ways:
1. Using the mark in connection with a good or service in commerce;
2. Registering the mark with the state registries; and/or
3. Registering the mark with the United States Patent and Trademark Office (PTO).
Why register? Registration provides trademark owners several valuable benefits. Registration gives the owner exclusive rights to use the mark in connection with the goods and/or services listed in the registration, and creates a public record of those rights.
Registration with the PTO may serve as a basis for obtaining registration in other countries. And should trademark owners seek to enforce their rights, registration allows them to bring a civil action for trademark infringement in federal court and seek damages (including up to three times damages and attorneys’ fees for willful infringement); creates a presumption that they own the mark and have the exclusive right to use it throughout the United States; and provides a basis both to exclude products bearing infringing marks from entry into the U.S. and to pursue cyber-squatters using similar marks.
What types of marks may be registered with the PTO? Only marks that have been used in interstate commerce and “affixed” to goods or services will receive registration from the PTO. This obviously creates a problem for some trademarks, since it may actually be illegal to offer or make the products with which they are associated available across state lines. There may be ways around this problem. These situations are best sorted out with the advice of an attorney familiar with the trademark, corporate, tax, state and federal issues.
Another problem qualifying a mark for registration is that the mark must not be subject to a statutory bar to registration. Federal law does not permit registration of marks likely to cause offense or public confusion, such as marks that disparage persons, institutions, beliefs or national symbols; marks already registered or in use, if such mark would likely cause confusion; and marks that are merely descriptive of the goods with which they are associated (for example, “Hot Tuna” for a heated tuna sandwich cannot be registered; the same mark for records likely could be).
Most importantly for the burgeoning marijuana marketplace, federal law also prohibits registration of marks that comprise “immoral, deceptive or scandalous matter.”
The PTO has in the past denied registration of drug-related marks such as, for example, MARIJUANA for a drink: “the term MARIJUANA refers to an illicit drug that is associated with illegal behavior and adverse health consequences. The proposed mark is therefore immoral or scandalous and thus unregistrable.”
That’s not to say that owners can’t register a mark for products or services that are associated with marijuana.
But, to obtain registration, owners must think very carefully about how to describe the goods or services covered by the mark. A good rule of thumb is to use words in the description that substitute for or may describe a broader class of goods or services.
For example, if describing a glass champagne flute, use “beverage container.”
How can owners protect trademarks not registered with the PTO? Federal registration confers the broadest geographic protection, but it is not mark owners’ only option to protect their marks. Owners in most states may register their marks with the state Secretary of State’s Office.
In addition, owners gain common law rights in marks they have actually used, provided the marks are not confusingly similar to marks already in use, although common law rights are limited to the geographic area in which the mark has been used.
Finally, logos and other marks that include visual or design elements are protected from unauthorized copying by copyright law; owners may register such marks with the U.S. Copyright Office instead of or in addition to any of the other methods discussed in this article, as will be discussed in future articles.
The benefits of trademark and other intellectual property protections, on the state or federal level (as available), are increasingly applicable to businesses and owners in the marijuana and related industries, and are best considered early in the business and marketing ventures.
How does one register a trademark? Trademark owners can apply for registration by filing the requisite forms, available at the PTO website, and paying a filing fee of between $275 and $375 for each class of goods in which the owner seeks registration.
An application must contain the owner’s name and address; a clear drawing of the mark, or, if the mark does not include a design, the text of the mark; a description of the goods or services for which the mark is or will be used; and the filing basis (use-based, if the owner already has begun using the mark in commerce, or intent-to-use based if the owner has not).
Once filed, applications are examined (typically within three months from filing) by an examining attorney, and take several months (and often longer, if there are substantive issues) to register.
Marijuana trademark filings with the PTO to date: Several individuals or companies have now submitted trademark applications with both the PTO and on the state level for goods or services related to the marijuana industry. Many of the active federal applications relating to the retail sales of marijuana are so new they have not yet been examined.
The PTO has denied older applications for marks used in connection with the sale of medical marijuana across the board, due to both the Controlled Substances Act and lack of legal use in commerce.
It will be instructive to see how this second wave of trademark filings fare at the PTO.
Again, the key to success likely lies in how an applicant describes its products or services. If it is possible to do so without mentioning marijuana, do it.
Colleen Hannigan is an associate in the Seattle office of Garvey Schubert Barer. If you have questions about intellectual property law or other 502 aspects, contact: Scott Warner (sgwarner@gsblaw.com) or Claire Hawkins (chawkins@gsblaw.com).