The rapid growth of the legal marijuana and cannabis industries has created a wide range of opportunities and challenges for lawyers advising clients developing businesses in that space. From challenges shipping products to land use issues to the inability to use traditional banks, cannabis entrepreneurs and their attorneys have had to invent creative solutions to problems that most businesses never face. The same challenges extend to the registration of federal trademarks for cannabis-related goods and services.
The Lanham Act allows for the registration of trademarks that are in use “in commerce” in the United States, and defines “commerce” as “all commerce which may lawfully be regulated by Congress.” The Trademark Office will generally not refuse to register a trademark because it is not lawfully used in commerce unless “(1) a violation of federal law is indicated by the application or other evidence …, or (2) when the applicant’s application-related activities involve a per se violation of a federal law.” See In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016). The rub for business owners seeking to register marijuana-related trademarks is that the cultivation, distribution, sale and consumption of marijuana remains illegal under federal law.
The Controlled Substances Act prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and marijuana-based preparations. This prohibition means that neither the production, preparation, distribution nor sale of marijuana is lawful use in commerce; therefore, the Trademark Office will not register trademarks for those goods and services.
The Trademark Office has refused to register applications for, among other things, retail stores services for medical marijuana, edible medical marijuana (both in states where medical marijuana was legal), “retail store services featuring herbs”, and marijuana-infused tea. The grounds in each case was that either the goods or services were illegal under federal law or that the services were primarily in support of illegal activity.
The recent legalization of hemp through the 2018 farm bill should open the door to the registration of more cannabis-related trademarks. Hemp is a type of cannabis, and CBD, a non-psychoactive cannabinoid, can be extracted from hemp. The DEA still considers CBD an illegal drug. The Trademark Office has previously refused to register trademarks for legal hemp oil on the grounds that the oil was made from a plant that could not be legally grown or processed. While there have been no indications that the Trademark Office has changed its position on CBD’s derived from hemp, the recent legislation should provide legal grounds to support the registration of CBD marks. Astute trademark attorneys may be able to provide greater protection for their clients’ intellectual property in this rapidly changing space.