Medical Marijuana Companies and the USPTO: No Trademarks for Cannabis
In what is yet another clash between state law and federal prohibition of marijuana under the Controlled Substances Act, the United States Patent and Trademark Office (“USPTO”) has held steadfast in its refusal to register trademarks for marijuana based products.
Naturally, business owners in the medical (and recreational) marijuana want to protect their business and brand names and take advantage of the protections afforded by federal registration. Federal registration benefits include, constructive notice nationwide of the trademark owner’s claim; evidence of ownership of the mark; jurisdiction of federal courts and obtain treble damages and attorneys’ fees; U.S. registration can be used as a basis for obtaining registration in foreign countries; registration may be used as a basis to prevent importation of infringing foreign goods; use of ® symbol; and entitles the trademark owner to certain statutory damages in cases of counterfeiting.
Back in 2010, it appeared that perhaps the USPTO was ready to start trademarking medical marijuana commerce, when on April 1st of that year it added a new trademark category, “[p]rocessed plan matter for medicinal purposes, namely medical marijuana.” This new category was posted on the USPTO’s website. However, this new category did not last long. After the USPTO was bombarded with questions about the new category, a spokesperson for the patent-office stated the new classification would be removed.
The reasoning behind the USPTO’s refusal to trademark marijuana related brands and products is because the trademark applicant cannot show that the goods or services are being lawfully used in “commerce” because the Controlled Substances Act (“CSA”) considered marijuana a Schedule I illegal drug. And the CSA makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, for examples, “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling or otherwise introducing into the human body a controlled substance, possession of which is unlawful under the CSA.” 21 U.S.C. § 863(d).
Since 2010, the USPTO has refused to register trademarks that are related to marijuana. Not all hope is lost, however, because a company can still get trademark protections. First, a marijuana business owner can get trademark protection for its products that are not related to the production and dissemination of marijuana. For an example, many dispensaries and manufacturers sell other products within their stores, such as non-marijuana infused candies or food, that would be eligible for trademark protection.
Secondly, common law trademark protection exists even if a person or company never files a federal registration. However, this only applies if the mark is not confusingly similar and not already in use. But, common law trademark protection has its limits. It only provides protection within the geographical area of the trademark’s use.
Lastly, state trademark registration is available. Through most secretary of state websites, including Minnesota, one can register a trademark at a state level.