Trademark registration and enforcement are vital to any brand owner’s ability to build brand recognition and value. However, trademark owners of cannabis goods and services will find trademark registration highly challenging because the United States Trademark Office’s current position is to deny registrations for goods and services that involve marijuana. Still, there are creative options for cannabis brand owners.
Trademark Office’s Current Position to Deny Federal Trademark Registration for Controlled Substances Regulated by the CSA
The Trademark Office will refuse registration for a controlled substance regulated by the Controlled Substances Act (“CSA”), a service that involves the sale or transportation of a controlled substance, and drug paraphernalia. The CSA makes it unlawful to manufacture, distribute, or dispense a controlled substance; possess a Schedule I controlled substance; or sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia. Marijuana and related marijuana extracts that contain THC are classified as a Schedule I controlled substance.
The Trademark Office’s review is not limited only to information provided in the application. The examining attorney who reviews the applications for registration can identify extrinsic evidence that the goods or services fail to comply with federal law. This extrinsic evidence usually comprises information found online. If the Examiner finds information suggesting that the applied-for goods or services involved unlawful activity under the CSA, then the Examiner must refuse registration regardless of the trademark owner’s response or belief that their use is compliant.
Trademark owners should expect that the Trademark Office will refuse registration if the underlying goods and services involve marijuana and related drug paraphernalia.
Federal Trademark Registration for Unregulated Cannabis Goods and Services
However, not all goods and services related to the cannabis plant are regulated by the CSA. The Trademark Office will issue registrations for goods containing non-marijuana parts of the hemp plant. Certain products containing hemp, hemp oil, and CBD are not considered “unlawful” under the CSA. Skincare and beauty products, oils, topical analgesics, dietary and nutritional supplements, vaporizer liquids for use in electronic vaporizers, and related in-store and online retail services do not violate the CSA.
To confirm that the covered goods or services do not violate the CSA, the examining attorney will generally require clarification that these goods do not contain THC or that the CBD is derived from industrial hemp. The trademark owner will have an opportunity to respond that the applied-for goods or services comply with federal law.
Federal Trademark Registration for Ancillary Goods and Services
Cannabis trademark owners may also seek federal trademark registration for ancillary goods and services that do not violate the CSA. These can include publications, informational websites, and clothing.
However, because an examining attorney may determine that even ancillary goods and services involve the sale or transportation of marijuana, careful attention must be paid to how the goods and services are initially described in the application and in any response to the examining attorney.
State Trademark Registration and Common Law Rights
Although federal registration for a trademark of cannabis goods and services is challenging, trademark owners can seek registration in state trademark registries in states that have legalized marijuana. Piecemeal state registration is not a perfect solution because this requires a trademark owner to apply for separate registrations in each applicable state. The practical result is that there can be different owners who have obtained state registrations for the same trademark. This result is not only confusing for consumers (which is what the Trademark Act attempts to protect against), but this creates an ad hoc system of registration and enforcement. Despite this, state registrations provide trademark owners protections against trademark infringement under the respective state statutes.
Further, trademark owners can secure common law trademark rights for their use in commerce. These common law rights arise from using the mark in commerce. An intent to use the mark is not enough. Common law rights are limited to the geographic area in which the trademark owner is using the mark. Trademark owners who expand into different geographic markets will need to be mindful that other trademark owners may have already obtained common law rights in that area. For this reason, statutory rights are preferable for enforcement purposes.
While trademark registration is challenging for cannabis brand owners, it is not impossible with the implementation of creative legal solutions. Partnering with an attorney can help you navigate the trademark registration and enforcement maze and build on a valuable intellectual property portfolio.
If you have any questions about this post or any other related matters, please feel free to contact our Cannabis Law Practice Group.