While marijuana has been fully legalized in many states in the United States of America, including Alaska, California, Colorado, district of Columbia, Maine, Massachusetts, Michigan, Nevada, Oregon, Vermont, Washington, it is still quite a difficult battle with the United States Patent and Trademark Office (USPTO) to get federal trademark protection for a trademark or service mark in this industry. The reason for that is simple: you cannot obtain a federal registration for goods or services that are not lawful pursuant to federal law.
In the U.S., an Applicant must show use of the mark in commerce to be entitled to registration. If there is no lawful use of the mark in commerce, there is no trademark.
We all know that many things have changed in regards to marijuana the past few years, but until this day, the federal Controlled Substances Act (CSA) continues to prohibit, among other things, manufacturing, distributing or dispensing controlled substances (21 U.S.C. §841(a)(1)), and marijuana is considered a Schedule I controlled substance under the CSA.
Beginning January 1, 2018, customers may register their cannabis-related trademark or service mark with the California Secretary of State’s office so long as: (1) the mark is lawfully in use in commerce within California; and (2) matches the classification of goods and services adopted by the United States Patent and Trademark Office. In California, California’s Secretary of State clarified that as of January 12, 2018, trademark applications for cannabis products and services would be processed, provided the marks are lawfully used in commerce under existing California law. Remember that not all cannabis-related products can be registered under current law due to the inability to meet federal classifications.
Since federal trademark law does not necessarily preempt state trademark law, all 50 states have enacted some form of state- based trademark registration and enforcement system. California and the USPTO aligned against the legality of Marijuana goods and services. While California provides for the registration of trademarks and service marks, California’s trademark law has a stated intent “to provide a system of state trademark registration and protection substantially consistent with the federal system of trademark registration and protection under the Trademark Act of 1946.”
To this day, the USPTO’S LAWFUL USE IN COMMERCE REQUIREMENT is the biggest obstacle for Applicants seeking trademark registration at the federal level. As long as marijuana remains a Schedule I controlled substance, federal trademark protection won’t be available.
Many clients indicate interest in challenging the status quo at the USPTO, but the Trademark Trial and Appeals Board (TTAB) through the issuance of numerous opinions showing the USPTO’s position on the “lawful use in commerce” requirement, tells us that “to qualify for a federal ... registration, the use of the mar in commerce must be lawful...”
It you would be interested in obtaining more information about the cannabis-related trademarks, email us at mail@noli-ipsolutions.com.