Feature

Roll Another (Serial) Number for the Road

Rebeccah Gan

©2015. Published in Landslide, Vol. 7, No. 5, May/June 2015, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

Print, broadcast, and social media will not advertise their goods and services.1 Yet, the advent of legal medical and recreational marijuana has nonetheless birthed a budding “green” economy replete with branded snack foods, infused cosmetic creams, sundry varieties of unprocessed cannabis, and even “CANNABRAND,” a marijuana-specific marketing agency.2 Unfortunately, the core of cannabis brands, the trade and service marks to which consumer goodwill necessarily attaches, are mired in a decidedly fraught relationship with intellectual property protection. Specifically, the complex interplay between the marijuana industry and the U.S. Patent and Trademark Office (USPTO) presents a variety of challenges for would-be pot barons. This article analyzes obstacles and potential protection strategies for cannabis brands in the emerging marijuana marketplace, including state trademark protection, federal copyright protection, obtaining federal trademark protection for a cannabis company’s non-marijuana-related goods and services, and possible protection for unregistered trade and service marks under section 43(a) of the Trademark Act.

First Dance with Mary Jane

Under U.S. trademark law, federal trademark registration can be granted only in connection with goods and services lawfully regulated by commerce, i.e., interstate commerce, or commerce between U.S. states and territories and each other, or with a U.S. entity and a foreign country.3 Traditionally, marijuana, a Schedule 1 controlled substance,4 and its attendant paraphernalia5 were treated as subject matter incapable of registration because they were and are still illegal under federal law. Accordingly, the USPTO would simply refuse registration of federal trade or service marks containing wording or images related to marijuana under section 2(a) of the Trademark Act as “immoral or scandalous matter,”6 as marks referencing illegal goods and services are presumed immoral and scandalous. For marks not explicitly referring to marijuana in their wording or design, registration would be refused under sections 1 and 45 of the Trademark Act as goods and/or services not in interstate commerce lawfully regulated by commerce.7

Notwithstanding these statutory bars, marks associated with marijuana grow lights, publications, and even pipe and rolling papers (as long as they could be used in connection with standard tobacco) were allowed to be registered by refraining from referencing marijuana in the application record and producing a specimen of use that avoided connection with marijuana.8 Similarly, marijuana-related publication trademarks and educational service marks have also received the federal trademark stamp of approval.9 However, with the rush of medical marijuana legalization across the United States, marijuana businesses pressed the USPTO for a solution to protect their popular strains from weed interlopers.10

Accordingly, on April 1, 2010, the USPTO created a new trademark category: “Processed plant matter for medicinal purposes, namely medical marijuana.”11 Green economy companies initially were able to advance applications for pot trademarks from “MAUI WOWIE” to “CHRONIC,” and service marks from “POT-N” to cannabis-infused sodas named “KEEF COLA” and “CANNA COLA” also briefly passed USPTO muster.12

One Toke (Too Far) Over the Line

By July 2010, the USPTO, buckling under the weight of questioning from the Wall Street Journal, had reversed course, calling the new category a “mistake” and noting that a trademark for marijuana had never been granted and was “highly unlikely” to be granted in the future.13

In further retreat from its April 2010 policy, USPTO examining attorneys were advised to make use of their power to issue formal requests for information,14 and specifically ask applicants if “the goods or services at issue violate the federal Controlled Substances Act [CSA].”15 The USPTO trademark examination form paragraphs were updated to include stock inquiry language requiring “fact sheets, brochures, advertisements, and/or similar materials relating to the services.” Applicants were further required to state for the prosecution record that the referenced services did not involve the provision of marijuana; information on how to obtain, grow, or otherwise procure marijuana; or the provision of services to businesses that provide marijuana, and that the applicant’s services were lawful pursuant to the CSA.16

Medical marijuana is now legal in 20 states and Washington, D.C.,17 making it an estimated $2.7 billion industry.18 In California alone, approximately $105 million is generated a year in sales tax revenue from medical marijuana dispensaries.19 In addition, Colorado and Washington legalized recreational marijuana in 2012.20 Alaska, Oregon, and the District of Columbia likewise voted to decriminalize recreational marijuana in November 2014.21

The inability to secure federal trademark registration puts pot brand owners at a clear disadvantage. 22 Blocked by the CSA from obtaining a federal trade or service mark and the attendant enforcement privileges federal registration affords, including public notice of a claim of ownership of the mark, a legal presumption of ownership of the mark, and the exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration.23 In addition, brands are generally valued higher when federal registration is secured.24 Moreover, lack of federal protection hampers claims of priority of use by brand owners.25 Accordingly, cannabis companies must look to a patchwork protection approach, looking to state laws, copyright protection, and federal unfair competition law.

Homegrown Remedies at State Common Law and State Registration

In contrast to most countries,26 trademark rights in the United States stem from use in commerce, and the federal Trademark Act does not preempt state common law rights.27 As such, marijuana brand owners still maintain state common law trademark rights.28 State trademark registration allows marijuana brand owners to claim trademark rights throughout a given state, even if the entity does not operate statewide. Generally inexpensive to procure, registering a marijuana mark on a public state trademark registry also puts potential pot state registrants on notice that a state registrant is, at minimum, alleging use of its marijuana mark.29 For example, the state registration will be revealed in trademark searches run by other potential users. State registration may also help establish prior use of the mark in a state infringement action. In addition, most states allow for protection of unprotected marks under specifically designated trademark claims, while others allow for protection under state unfair competition or deceptive practices acts.30

Copyright Cures

Unlike the Lanham Act, the Copyright Act contains almost no prohibitions on the subject matter of the nature of a work subject to copyright protection.31 For example, both unlawful and lawful forms of pornography are protected by the Copyright Act.32 Notably, federal copyright protection has been extended to a variety of marijuana-content works, including cannabis grow guides and cookbooks.33 Creative works must be registered with the U.S. Copyright Office before they can be the basis for claims made under the federal Copyright Act.34

The Copyright Act’s chief limitation is to the level of originality in a given work.35 The Act provides a decidedly low bar to registration, requiring only “a minimal degree of creativity.”36 Toward that end, a work infringing on the creative works of another is not capable of securing copyright protection.37 Similarly, product design wherein there is an element of utilitarian functionality is protectable “only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”38

For cannabis brands, federal copyright protection is available to protect the text and artwork on logos, labels, product tags, product packaging, instructional materials, and the ornamental product design,39 as long as the foregoing contain sufficiently original and creative content to be copyrightable.40

Similarly, copyright protection could extend to the design aspects of “useful articles” such as smoking implements, cannabis diffusers, and sundry types of storage containers as long as the utilitarian aspects are sufficiently separable from the design features.

Mixing Up the (Federal Registration) Medicine

Moreover, marijuana brand owners can still seek and obtain federal protection for their lawful commerce goods and services ancillary to their pot-based businesses.41 In addition to the drugs themselves, the CSA also restricts drug paraphernalia, i.e., “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.”42 Accordingly, the plethora of pot-infused food and beverages, oils, creams, and smoking implements would not qualify as “lawful commerce” goods.

However, there are significant hurdles for marijuana brand owners in attempting to register ancillary goods and services. Ancillary goods can be registered only if they are capable of being used outside the cannabis context.43

Moreover, a service mark can only be registered for activities that constitute services as contemplated by the Trademark Act. While the Trademark Act defines the term “service mark,” it does not define what constitutes a service.44 Under federal case law, to be a service mark, a service must: (1) be a real activity;45 (2) be performed to the order of, or for the benefit of, someone other than the applicant; and (3) the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service.46 These last two prongs of the service test could be toxic for marijuana brand owners. With respect to assessing the beneficiary of a given service, the controlling question is who primarily benefits from the activity for which registration is sought. If the activity is done primarily for the benefit of others, the fact that the applicant derives an incidental benefit is not fatal.47 On the other hand, if the activity primarily benefits the applicant, it is not a registrable service even if others derive an incidental benefit.48 For pot service providers attempting to filter out lawful services from unlawful services for the purposes of federal registration, promotional activities that benefit the service provider, and not the consumer of such services, are not actual services under the Trademark Act. For example, publications that are but cloaked advertisements for an applicant’s services would seem to fail the “benefit of others” prong.49

With respect to whether or not an activity performed is “qualitatively different” from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service, marijuana brand owners could be harmed by a “fruit of a poisonous tree” type of reasoning. If their proffered “lawful” services are not “qualitatively different” from their unlawful marijuana-related goods and services, registration could be denied.50 Under current case law on what constitutes valid, separable goods and services, it is unlikely that an applicant could overcome such a bar to registration.

Similarly, an activity that is normally expected or routinely done in connection with the sale of a product or another service is not a registrable service even if it is identified by a different mark.51 For example, providing general information or instructions as to the purpose and uses of the applicant’s goods is merely incidental to the sale of goods, not a separate informational service.52 Under present case law, it is unlikely that a marijuana dispensary could successfully register its mark in connection with “providing information in the fields of health and wellness” if these services are merely related to the use of marijuana as treatment for illness or disease.53 Some practitioners have suggested that marijuana users game the system by filing intent-to-use applications and dragging the prosecution process out at long as possible in the hopes that federal law and/or policy would change in the course of prosecution.54 However, even intent-to-use applicants are required to possess a bona fide intent to use the mark in lawful commerce.55 Accordingly, an applicant filing an intent-to-use application in connection with an unlawful activity could be vulnerable to charges of fraud on the USPTO.56

Section 43(a) Protection: Pipe Dream or Possibility?

Section 43(a) of the Trademark Act provides protection for unregistered trademarks from unfair competition,57 as long as the marks have been used in the sale of goods or services.58 On its face, section 43(a) does not define the type of use that creates enforceable common law rights in unregistered marks.59 Instead, section 43(a) addresses only the preconditions for determining infringement of an unregistered mark.60

Indeed, section 43(a) never explicitly refers to “unregistered trademarks” or even “trademarks.” Instead, the Act refers to misuse of a “word, term, name, symbol, or device” without regard to the registration status of such expressions.61 Accordingly, section 45 of the Trademark Act, including the provision requiring “lawful” use in commerce, is not per se applicable to unregistered marks under section 43(a).62

However, historically most courts have held that one must read the section 2 requirements into section 43(a).63 Indeed, the Supreme Court has explicitly held that “the general principles qualifying a mark for registration under § 2 of the Lanham Act are for the most part applicable in determining whether an unregistered mark is entitled to protection under § 43(a).”64 Courts have also required parties claiming enforceable common law rights to evidence actual use in commerce.65 Courts will look at the totality of the circumstances to determine whether rights have in fact accrued,66 including, but not limited to, sales volume, the reasonable realm of expansion, and the amount and character of advertising.67

Notably, to oppose an application or petition to cancel a registered mark, a party is not required to make actual use of a mark in interstate commerce. Instead, it can allege “use analogous to trademark use.”68 Use analogous to trademark use encompasses activities such as advertising or promotional activities that do not rise to the level of use on or in connection with goods or extant services.69

Unlike section 2 of the Trademark Act, section 43(a) provides no explicit restrictions on which marks may be protected, sans functionality.

Notably, courts addressing enforcement under section 43(a) of the Trademark Act have addressed section 2 restrictions in the context of marks comprising generic, descriptive, or functional matter. Courts have not addressed marks unregistrable in the context of Section 2(a) or Sections 1 and 45 of the Trademark Act. Accordingly, unregistered marks may be ineligible for federal protection under Section 43(a) because of, e.g., Section 2(a) bars on scandalous or immoral matter or because any extant rights for unregistered marks under section 43(a) have not yet been adjudicated, e.g., marks used in connection with unlawful commerce under Sections 1 and 45.71

Arguably, there are very different policy considerations at play with respect to generic, descriptive, or functional matter—that it would be anticompetitive to allow one user a monopoly of generic terms or a common design. No such anticompetitive behavior is at play with respect to marks comprising immoral or scandalous matter; there is no argument that a third party “needs” a mark truly containing immoral or scandalous matter to describe its goods or services. Similarly, the federal legality of underlying activity, e.g., a cannabis co-op, has nothing to do with promoting fair competition under section 43(a).72 Additionally, while courts have read section 2 considerations into section 43(a) cases in the context of generic, descriptive, and/or functional marks, they have nonetheless maintained that section 43(a) is broader than section 2 protection.73

Interestingly, section 43(a) does contain an explicit bar on enforcement of functional product design or packaging, just as section 2 bars registration of functional marks.74 Had Congress wanted to provide additional exclusions, e.g., to bar enforceability of rights for unregistered marks comprising immoral or scandalous matter, it clearly had the opportunity to do so.75

Courts have addressed the enforcement of rights under section 2 of Trademark Act as to goods or services not lawful in commerce, typically with respect to labeling violations of Food and Drug Administration (FDA) regulations.76

Similarly, the Trademark Trial and Appeal Board (TTAB) has applied what it calls “the lawful use doctrine” based on the USPTO’s own interpretation of the requirement that a mark be used in commerce,77 against owners or challengers of marks contested via opposition or cancellation proceedings.78 The TTAB generally will invalidate usage “only when the issue of compliance has previously been determined (with a finding of noncompliance) by an entity, such as a court or government agency, having competent jurisdiction under the statute in question, or where there has been a per se violation of a statute regulating the sale of a party’s goods.”79

Accordingly, it is untested whether section 43(a) would allow for the protection of unregistered cannabis marks. Interestingly, the applicability of section 43(a) to marks unregistrable under section 2(a) has been discussed recently in the context of the Washington Redskins trademarks, which were cancelled by the TTAB most recently in 2014.80 The Redskins word mark trademarks were cancelled pursuant to section 2(a) of the Act as disparaging matter, namely, as a racist epithet for Native Americans. Some practitioners and legal analysts have declared that the Redskins still have rights “enforceable against infringers under Section 43(a).”81 If the now unregistered Redskins word marks are ultimately held enforceable under section 43(a), arguably, cannabis brand owners could also take advantage of unfair competition rights for their unregistered marks. In states where medical marijuana and/or recreational marijuana is legal, consumers cannot be said to be victims of a material misrepresentation as to the legality of the goods. It is also unclear how cannabis brands’ usage while marijuana is illegal at the federal level would be treated should marijuana be decriminalized or rescheduled. It is possible that such usage could be treated as, at minimum, “use analogous to trademark use” for unregistered marks under section 43(a).

The Last Drag

One thing is clear in the haze of brand enforcement challenges for marijuana businesses: lack of a current comprehensive federal protection regime has not blunted consumer appetites for pot products and services. Accordingly, marijuana brands yield both big revenue and big potential for consumer confusion.

Public support for legalizing marijuana use is at an all-time high of 54 percent. And fully 75 percent of the public—including majorities of those who favor and oppose the legal use of marijuana—think that the sale and use of marijuana will eventually be legal nationwide.82 In 2013, Attorney General Eric Holder even formally instructed U.S. attorneys not to prosecute marijuana businesses that comply with their respective state laws and do not engage in interstate commerce.83

It is only a matter of time before cannabis goes the way of pornography and speakeasies, goods and services once viewed as pernicious and illegal, and later decriminalized and deemed worthy of federal protection.84

In the meantime, budding pot barons and their consumers are clearly disadvantaged by the bar to federal trademark registration. For example, Rohan Marley, scion of legendary reggae musician and pot smoker Bob Marley, announced the launch of “MARLEY NATURALS” “heirloom Jamaican cannabis strains” and topical in 2015.85 A Colorado individual with no connection to the Marley family promptly filed and obtained four Colorado state trademarks for “NATURAL MARLEY SPIRIT” in connection with cigarettes, food and beverages, medicinal products, and health and beauty products.86 Rohan Marley, who owns and operates the Colorado-based coffee business “MARLEY COFFEE,” could challenge the “NATURAL MARLEY SPIRIT” registrant under state trademark common law87 and unfair competition law based on their prior usage of “MARLEY” for coffee, but this would likely allow him to challenge only “NATURAL MARLEY SPIRIT” registrations for edible goods. Although Rohan Marley has federal trademark protection for the “MARLEY COFFEE” brand,88 he is currently barred from obtaining protection for the “MARLEY NATURALS” cannabis brand. Whether or not protection under section 43(a) as an unregistered mark is available remains an open question. Accordingly, Rohan Marley, like other budding pot barons, must employ a variety of common law, state, and federal strategies to protect against ersatz edibles and imitation green while federal trademark protection is still evolving.

Endnotes

1. Mike Adams, Washington State Publishes Strict Regulations for Pot Advertising, High Times (Dec. 24, 2014), http://www.hightimes.com/read/washington-state-publishes-strict-regulations-pot-advertising; Keith Coffman, Limits on Marijuana Advertising Land Colorado in Court, Reuters (Feb. 12, 2014), http://www.reuters.com/article/2014/02/13/us-usa-colorado-marijuana-idUSBREA1C01E20140213; Jacob Sullum, Legalize It, But Don’t Advertise It: High Times Fights Colorado’s Restrictions on Marijuana-Related Speech, Forbes (Aug. 28, 2014), http://www.forbes.com/sites/jacobsullum/2014/08/28/legalize-it-but-dont-advertise-it-high-times-fights-colorados-onerous-restrictions-on-marijuana-related-speech/.

2. Jessica Bennett, In Colorado, a Rebranding of Pot Inc., N.Y. Times, Oct. 3, 2014, http://www.nytimes.com/2014/10/05/fashion/in-colorado-a-rebranding-of-pot-inc-marijuana.html; Tom Huddleston Jr., Sipping and Tripping: The Growing Market for Weed-Infused Edibles, Fortune (Aug. 27, 2014), http://fortune.com/2014/08/27/sipping-tripping-weed-infused-beverage-market/; Elise McDonough, Marijuana Topicals: A Growing Industry, High Times (July 14, 2014), http://www.hightimes.com/read/marijuana-topicals-growing-industry.

3. The power of the federal government to register marks comes from the commerce clause of the U.S. Constitution. Section 1 of the Trademark Act, 15 U.S.C. § 1051, permits application for registration of “a trademark used in commerce” or of a trademark that a person has a bona fide intention to use in commerce. Section 45 of the Trademark Act, 15 U.S.C. § 1127, defines “commerce” as “all commerce which may lawfully be regulated by Congress.” Outside of Schedule 1 drugs, the USPTO does not routinely inquire regarding possible illegal conduct during the course of application prosecution. See Kellogg Co. v. New Generation Foods, Inc., 6 U.S.P.Q.2d 2045 (T.T.A.B. 1988) (noting that the USPTO will not question labeling compliance during examination of a mark); Medtronic, Inc. v. Pacesetter Sys., Inc., 222 U.S.P.Q. 80 (T.T.A.B. 1984); see also U.S. Patent & Trademark Office, Trademark Manual of Examining Procedure (TMEP) § 907 (Apr. 2013) (noting that the USPTO “does not inquire whether [use in commerce] is lawful unless the record . . . shows a clear violation of law, such as the sale or transportation of a controlled substance”; rather, the USPTO “presumes that an applicant’s use of the mark in commerce is lawful”).

4. Controlled Substances Act of 1970 (CSA), 21 U.S.C. §§ 801–971. Schedule I is the only category of controlled substances that may not be prescribed by a physician. Under 21 U.S.C. § 812(b), drugs must meet three criteria in order to be placed in Schedule I: (1) the drug or other substance must have a high potential for abuse; (2) the drug or other substance must have no currently accepted medical use in treatment in the United States; and (3) there must be a lack of accepted safety for use of the drug or other substance under medical supervision. Marijuana was placed under Schedule I in 1970. At that time, the National Commission on Marihuana and Drug Abuse formed under President Nixon had actually advocated legalizing cannabis. However, President Nixon “had very strong feelings on marijuana,” believing that “homosexuality, dope, immorality in general: These are the enemies of strong societies. That’s why the Communists and the left-wingers are pushing the stuff, they’re trying to destroy us.” Conversation 498-5, Nixon Tapes (May 13, 1971), http://www.csdp.org/research/nixonpot.txt. Numerous efforts have been waged to remove marijuana from Schedule I since as early as 1972, all to no avail. Removing Marijuana from the Controlled Substances Act, Drug Pol’y Alliance (May 2013), http://www.drugpolicy.org/sites/default/files/DPA_Fact%20sheet_Marijuana%20Reclassification_May%202013.pdf (noting that efforts in 1972, 1986, 2002, and 2011 to “reschedule” marijuana to a lower schedule failed).

5. Under § 863 of the CSA, “items primarily intended or designed for use in ingesting, inhaling, or otherwise introducing marijuana . . . into the human body” are considered drug paraphernalia.

6. 15 U.S.C. § 1052(a) provides that registration can be denied for marks that consist of matter that is immoral, deceptive, or scandalous, or that disparages, e.g., persons or groups.

7. Section 1 (15 U.S.C. § 1051) requires use in commerce or a bona fide intent to use a given mark in commerce; section 45 (15 U.S.C. § 1127) defines commerce as “all commerce which may lawfully be regulated by Congress.”

8. SOLARSTORM, Registration No. 4,579,708 (“indoor horticulture LED lights”); G8LED, Registration No. 4,443,613 (“cultivation lamps and parts thereof, namely, high pressure sodium (HPS), metal halide, plasma, and light emitting diode (LED)”); PC GROW BOX, Registration No. 3,559,268 (“hydroponics grow box in the nature of a closed environment equipped with lights, exhaust system, hydroponics growing container and odor control system”); REDGIES BLUNT ORIGINAL FLAVOR, Registration No. 3,520,914 (“smokers’ articles, namely, matches, cigarette paper, pipes, smokers’ lighters, cigar boxes and cases, cigarette boxes and cases, smokers’ ashtrays, cigarette filters, pocket machines for rolling cigarettes, smoking pipes”); BAMBU, Registration No. 1,547,627 (“cigarette paper”); RANDY’S, Registration No. 1,507,464 (“cigarette papers”).

9. See MEDICAL JANE, Registration No. 4,640,747 (“providing a website featuring information concerning alternative health and healing; providing on-line information, news and commentary in the field of health and wellness relating to medical marijuana and regarding indications and effects of particular cannabis strains”); 420 MAGAZINE, Registration No. 4,293,817 (“providing a website featuring news, facts, information, commentary and comment on the legalization of hemp and Medical Cannabis”); CANNABIS CUP, Registration No. 2,581,279 (“organization and arrangement of conventions and fairs in the field of cannabis”); HIGH TIMES, Registration No. 1,883,561 (“magazines about hemp”); NORML, Registration No. 0,997,137 (“providing a comprehensive program of educational and promotional services relating to the reform of marijuana laws”).

10. Of course an actual “strain” could not be protected as a trademark—this would violate sections 1, 2, and 45 of the Trademark Act, which forbid registration for plant name and varietals. 15 U.S.C. §§ 1051, 1052, 1127; see Dixie Rose Nursery v. Coe, 131 F.2d 446 (D.C. Cir. 1942), cert. denied, 318 U.S. 782 (1943); In re Hilltop Orchards & Nurseries, Inc., 206 U.S.P.Q. 1034 (T.T.A.B. 1979); In re Farmer Seed & Nursery Co., 137 U.S.P.Q. 231 (T.T.A.B. 1963); In re Cohn Bodger & Sons Co., 122 U.S.P.Q. 345 (T.T.A.B. 1959). Plant strains can be protected under the U.S. patent law as plant patents. 35 U.S.C. § 161 (providing a 20-year term of protection to one who has invented or discovered and asexually reproduced a distinct and new variety of plant, and granting him or her the ability to exclude others from asexually reproducing, selling, or using the plant so reproduced); see also Jason Blevins, Pot Growers Cultivating in the Shadows Seek U.S. Patent Protection, Denver Post, Dec. 26, 2014, http://www.denverpost.com/potanniversary/ci_27174732/pot-growers-cultivating-shadows-seek-u-s-patent (noting a Colorado grower is currently seeking plant patent protection for a “cannabis superstrain”).

11. Justin Scheck, Patent Office Raises High Hopes, Then Snuffs Them Out, Wall St. J., July 19, 2010, http://www.wsj.com/articles/SB10001424052748704682604575368783687129488; Letter from Deputy Commissioner for Trademark Policy (Sept. 23, 2010) (“During the timeframe in which [the applicant’s] application [for ‘[p]rocessed plant matter for medicinal purposes, namely, medical marijuana’] was filed, the Office’s Acceptable Identification of Goods and Services Manual (ID Manual) mistakenly included entries for certain medical marijuana-related goods and services, and these entries were subsequently removed because they did not reflect goods and services that may be in lawful use in commerce [and the] Office also has determined that under federal law, [the] identified goods/services appear to be illegal, or to potentially encompass illegal good/services. See The Controlled Substances Act (CSA), 21 U.S.C. §§ 801 et seq. Therefore, [the] application may be refused registration on the grounds that the mark is not in lawful use in commerce under §§ 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127, and the CSA.”).

12. U.S. Trademark Application Serial Nos. 85,079,167 (“KEEF COLA,” in connection with “medicinal drinks”); 85,061,225 (“POT-N,” in connection with “food products containing marijuana including food products sold for medical purposes”); 85,049,722 (“CHRONIC,” in connection with “processed plant matter for medicinal purposes, namely, medical marijuana”); 85,049,702 (“MAUI WOWIE,” in connection with “processed plant matter for medicinal purposes, namely, medical marijuana”); 77,655,877 (“CANNA COLA,” in connection with “medicinal colas; medicinal non-alcoholic beverages, namely, medicinal carbonated beverages; medicinal pop; medicinal soda pops; medicinal soft drinks”).

13. See Scheck, supra note 11.

14. Failure to satisfactorily respond to a request for information is a ground for refusing registration. See In re Cheezwhse.com, Inc., 85 U.S.P.Q.2d 1917, 1919 (T.T.A.B. 2008); In re Garden of Eatin’ Inc., 216 U.S.P.Q. 355, 357 (T.T.A.B. 1982); TMEP, supra note 3, § 814.

15. See, e.g., U.S. Trademark Application Serial No. 85,107,779, Office Action (Dec. 14, 2010) (“FROM SEED TO SALE”); U.S. Trademark Application Serial No. 85,022,073, Office Action (Mar. 3, 2011) (“WHERE THE GRASS IS ALWAYS GREENER”); U.S. Trademark Application Serial No. 77,900,965, Office Action (Dec. 14, 2010) (“THE KING OF POT”).

16. See, e.g., MD MARIJUANADOCTORS.COM, Registration No. 4,562,783, Prosecution File (“healthcare management service organization (MSO) services, namely, providing practice organization, management and administrative support services to individual physicians or small group practices”).

17. See Marijuana Resource Center: State Laws Related to Marijuana, Off. Nat’l Drug Control Pol’y, http://www.whitehouse.gov/ondcp/state-laws-related-to-marijuana (last visited Mar. 24, 2015).

18. See The State of Legal Marijuana Markets: Executive Summary (3d ed. 2015), available at http://static1.squarespace.com/static/526ec118e4b06297128d29a9/t/54cbc85de4b098296f3c4c7d/1422641245523/Executive+Summary+-+The+State+of+Legal+Marijuana+Markets+-+3rd+Edition.pdf.

19. See State Medical Marijuana Programs’ Financial Information, Marijuana Pol’y Project, http://www.mpp.org/assets/pdfs/library/State-Medical-Marijuana-Programs-Financial-Information.pdf (last updated Oct. 18, 2013).

20. Colorado and Washington state government agencies predict upward of $800 million in extra revenue over the next few years as a result of marijuana sales. Niraj Chokshi, Marijuana Could Deliver More Than $800 Million in Revenue to Washington and Colorado, Wash. Post, Sept. 26, 2014, http://www.washingtonpost.com/blogs/govbeat/wp/2014/09/26/marijuana-could-deliver-more-than-800-million-in-revenue-to-washington-and-colorado/.

21. D.C. voters approved, by a nearly 2-to-1 margin, to legalize the possession of up to two ounces of pot or up to three plants for personal use. Congress swiftly nipped D.C.’s decriminalization efforts in the bud by virtue of a rider placed on the December 2014 $1.1 trillion spending bill. Aaron C. Davis, Congressional Spending Deal Blocks Pot Legalization in D.C., Wash. Post, Dec. 9, 2014, http://www.washingtonpost.com/local/dc-politics/congressional-budget-deal-may-upend-marijuana-legalization-in-dc/2014/12/09/6dff94f6-7f2e-11e4-8882-03cf08410beb_story.html.

22. A trademark registered on the federal principal register can be either prima facie or conclusive evidence of a registrant’s exclusive right to use the registered mark in commerce. Section 33(a) and (b) of the Lanham Act, 35 U.S.C. § 1115(a), (b), provide:

(a) [A] mark registered on the principal register . . . and owned by a party to an action shall be admissible in evidence and shall be prima facie evidence of . . . the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration subject to any conditions or limitations stated therein, but shall not preclude another person from proving any legal or equitable defense or defect . . . which might have been asserted if such mark had not been registered.

(b) [If] the right to use the registered mark has become incontestable under section 1065 of this title, the registration shall be conclusive evidence of . . . the registrant’s exclusive right to use the registered mark in commerce . . . on or in connection with the goods or services specified in the affidavit filed under the provisions of section 1065 . . . subject to any conditions or limitations [stated therein.]

See also Andrew Stockment, Trademarks 101 Part 2: The Benefits of Federal Registration, ABA, http://www.americanbar.org/groups/young_lawyers/publications/the_101_201_practice_series/trademarks_101_part_2_the_benefits_of_federal_registration.html (last visited Mar. 24, 2015).

23. Some additional advantages of federal registration include: (1) the right to sue in federal court and, in certain cases, obtain treble damages and attorneys’ fees, thereby providing for potential significant monetary recovery in appropriate cases; (2) statutory damages in the case of counterfeiting, relieving you from having to demonstrate actual damages in order to receive a monetary award; (3) nationwide notice of ownership of the mark as of the registration date, preventing others from claiming their subsequent adoption of the mark was in “good faith”; (4) the mark is treated as if used nationwide as of the application date, which is vital in a system in which first use wins—otherwise, your rights are limited to the geographic area of use or reputation of the mark, potentially allowing others to use the same mark in another geographic area and leading to inevitable confusion when one or both parties expands; (5) protection against registration of confusingly similar marks, as the USPTO has a duty to cite prior registrations against applications for confusingly similar marks and to refuse to register such marks. Trademark FAQs, USPTO, http://www.uspto.gov/faq/trademarks.jsp#_Toc275426681 (last modified Feb. 25, 2015).

24. Brand Valuation, Int’l Trademark Ass’n, http://www.inta.org/TrademarkBasics/FactSheets/Pages/BrandValuation.aspx (last visited Mar. 24, 2015).

25. Erva Pharm., Inc. v. Am. Cyanamid Co., 755 F. Supp. 36, 40 (D.P.R. 1991) (in dismissing the action, the court noted that “if the product [was] being marketing in violation of [FDA laws], plaintiff’s use of the trademark is unlawful and cannot be the basis upon which to enforce its [trademark rights as] senior user of the mark”).

26. David I. Greenbaum, No Registration, No Problem, World Trademark Rev., Dec./Jan. 2013, at 90.

27. See infra note 30.

28. Kieran G. Doyle, Trademark Strategies for Emerging Marijuana Businesses, Westlaw J., (Thomson Reuters May 14, 2014), available at http://www.cll.com/clientuploads/CLL%20e-news%20spring%202014/KGD%20Trademark%20Strategies%20for%20Emerging%20Marijuana%20Businesses%20Westlaw%20Journal%20IP%20May%202014.pdf (noting that common-law rights, when recognized, will protect a mark holder only against infringement that occurs with its specific geographical market, e.g., within state boundaries).

29. Id.; State Trademark Registration in the United States, Int’l Trademark Ass’n (July 2014), http://www.inta.org/TrademarkBasics/FactSheets/Pages/StateTrademarkRegistrationsUSFactSheet.aspx.

30. Lee Ann W. Lockridge, Abolishing State Trademark Registrations, 29 Cardozo Arts & Ent. L.J. 597, 602–03 nn.18–19 (2011) (“All but a handful of states (Alaska, Louisiana, and New Mexico), expressly preserve common law trademark rights by means of a savings clause within the state statutory trademark scheme”; “[u]nfair competition claims based on infringement of a common law mark arise from the common law in some states and in other states have also been recognized to fall within the scope of a statutory unfair trade practices act”).

31. See, e.g., Mitchell Bros. Film Grp. v. Cinema Adult Theater, 604 F.2d 852, 860 (5th Cir. 1979) (“[P]rotection of all writings, without regard to their content, is a constitutionally permissible means of promoting science and the useful arts.”).

32. Perfect 10, Inc. v. Cybernet Ventures, Inc., 213 F. Supp. 2d 1146, 1165 (C.D. Cal. 2002) (concluding that protection of pornographic copyrights was “consistent with the public interest”); cf. Devils Films, Inc. v. Nectar Video, 29 F. Supp. 2d 174, 175–76 (S.D.N.Y. 1998) (denying preliminary injunction for copyright infringement for “obscene” films and noting that “[g]iven the clearly criminal nature of plaintiff’s operation, it is self-evident that the Court should not use its equitable power to come to plaintiff’s assistance . . . [and] support the operation of plaintiff’s pornography business.”); see also Ann Bartow, Copyright Law and Pornography, 91 Or. L. Rev. 1 (2012).

33. U.S. Copyright Registration Nos. TX0000771319 (“cannabis starter kit”); TX0000582962 (“Cannabis Growers Supply 1980 outdoor gardening kit instructions”); TX0005209814 (“Gourmet Cannabis Cookery: The High Art of Marijuana Cuisine”).

34. 17 U.S.C. § 408. Under § 408(c)(1), “[t]he Register of Copyrights is authorized to specify by regulation the administrative classes into which works are to be placed for purposes of deposit and registration . . . . This administrative classification of works has no significance with respect to the subject matter of copyright or the exclusive rights provided by this title.”

35. See Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991); Brandir Int’l, Inc. v. Cascade Pac. Lumber, Co., 834 F.2d 1142 (2d Cir. 1987); John Muller & Co. v. N.Y. Arrows Soccer Team, Inc., 802 F.2d 989 (8th Cir. 1986).

36. Feist, 499 U.S. at 345.

37. See Gracen v. Bradford Exch., 698 F.2d 300 (7th Cir. 1983) (holding that authorized drawing of Dorothy based on The Wizard of Oz film constituted a derivative work and that derivative works “must be substantially different from the underlying work to be copyrightable”); Anderson v. Stallone, 11 U.S.P.Q.2d 1161 (C.D. Cal. 1989) (holding that Sylvester Stallone owned the copyright in characters from the Rocky films, including the rights to derivative works under 17 U.S.C. § 106(2) such that an authorized Rocky script constituted an infringing work not protectable by copyright).

38. 17 U.S.C. § 101.

39. Innovation Ventures, LLC v. N2G Distrib., Inc., 635 F. Supp. 2d 632 (E.D. Mich. 2008) (warning labels protectable by copyright); Derek Andrew, Inc. v. Poof Apparel Corp., No. C051136, 2006 WL 3791371 (W.D. Wash. Dec. 22, 2006), rev’d on issue of statutory damages, 528 F.3d 696 (9th Cir. 2008) (finding copyright infringement of federally protected hangtag); Parfums Givenchy, Inc. v. C&C Beauty Sales, Inc., 832 F. Supp. 1378, 1391 (C.D. Cal. 1993) (“It is well established that an artistic packaging design . . . is entitled to copyright protection.”).

40. However, “[single] words and short phrases such as names, titles, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering or coloring” are not copyrightable. 37 C.F.R. § 202.1(a).

41. See supra note 8.

42. 21 U.S.C. § 863.

43. See U.S. Trademark Application Serial No. 86,427,110, Office Action (Nov. 25, 2014) (“BODYBUD BOTANICALS,” in connection with marijuana-infused cosmetic goods); U.S. Trademark Application Serial No. 86,245,147 (“KOSHERB,” in connection with kosher marijuana edibles); U.S. Trademark Application Serial No. 85,079,814, Office Action (Sept. 27, 2010) (“MOUNTAINMEDIBLES,” in connection with marijuana-infused food products).

44. 15 U.S.C. §§ 1051, 1053, 1127.

45. Ideas, concepts, systems, processes, and methods, are not considered “real activities” under the Trademark Act. In re Universal Oil Prods. Co., 476 F.2d 653 (C.C.P.A. 1973); In re Citibank, N.A., 225 U.S.P.Q. 612 (T.T.A.B. 1985); In re Scientific Methods, Inc., 201 U.S.P.Q. 917 (T.T.A.B. 1979); In re McCormick & Co., 179 U.S.P.Q. 317 (T.T.A.B. 1973).

46. In re Canadian Pac. Ltd., 754 F.2d 992 (Fed. Cir. 1985); In re Betz Paperchem, Inc., 222 U.S.P.Q. 89 (T.T.A.B. 1984); In re Integrated Res., Inc., 218 U.S.P.Q. 829 (T.T.A.B. 1983); In re Landmark Commc’ns, Inc., 204 U.S.P.Q. 692 (T.T.A.B. 1979).

47. In re Venture Lending Assocs., 226 U.S.P.Q. 285 (T.T.A.B. 1985).

48. In re Dr. Pepper Co., 836 F.2d 508 (Fed. Cir. 1987) (finding contest promoting applicant’s goods not a service, even though benefits accrue to winners of contest); In re Alaska Nw. Publ’g Co., 212 U.S.P.Q. 316 (T.T.A.B. 1981).

49. Cf. In re Billfish Int’l Corp., 229 U.S.P.Q. 152 (T.T.A.B. 1986) (holding that the publication of one’s own periodical is not a service because it is done primarily for the applicant’s own benefit and not for the benefit of others).

50. The fact that activities are offered only to purchasers of the applicant’s primary goods or services does not mean that the activity is not a service. In re Otis Eng’g Corp., 217 U.S.P.Q. 278 (T.T.A.B. 1982) (deeming quality control and quality assurance services registrable even though the services were limited to applicant’s own equipment); In re John Breuner Co., 136 U.S.P.Q. 94 (T.T.A.B. 1963) (finding credit services offered only to customers of applicant’s retail store to be a service). However, the fact that the services for which registration is sought are offered to a different class of purchasers than the purchasers of the applicant’s primary product or service is a factor weighed in determining whether a proffered service is “real.” In re Forbes Inc., 31 U.S.P.Q.2d 1315 (T.T.A.B. 1994); In re Home Builders Ass’n of Greenville, 18 U.S.P.Q.2d 1313 (T.T.A.B. 1990).

51. In re Dr. Pepper Co., 836 F.2d 508 (Fed. Cir. 1987); In re Television Digest, Inc., 169 U.S.P.Q. 505 (T.T.A.B. 1971).

52. In re Moore Bus. Forms Inc., 24 U.S.P.Q.2d 1638 (T.T.A.B. 1992) (paper manufacturer rating merely provides information about its goods and is not rendering a service to others); In re Reichhold Chems., Inc., 167 U.S.P.Q. 376 (T.T.A.B. 1970) (“promoting the sale and use of chemicals” is not a registrable service, where the applicant is merely providing “technical bulletins” about its own products); Ex parte Armco Steel Corp., 102 U.S.P.Q. 124 (Comm’r Pats. 1954) (analyzing the needs of customers is not registrable as a “consulting service,” as this is “ordinary activity” normally expected of a manufacturer); Ex parte Elwell-Parker Elec. Co., 93 U.S.P.Q. 229 (Comm’r Pats. 1952) (providing incidental instructions on the efficient use of applicant’s goods is not a service). However, an applicant’s marketing event with content that arguably benefits consumers, namely, free hairstyling instructional “parties,” was found to be a service because this is above and beyond what one would expect from a wig manufacturer. In re Heavenly Creations, Inc., 168 U.S.P.Q. 317 (T.T.A.B. 1971).

53. See U.S. Trademark Application Serial No. 86,384,254, Office Action (Oct. 9, 2014) (“GRASS ROOTS,” in connection with “medical services using marijuana for certain conditions specified by physicians”); U.S. Trademark Application Serial No. 85,194,729, Office Action (Jan. 24, 2011) (“ECO HARMONY FESTIVALS,” in connection with “workshops in the field of medical marijuana, hemp, and wellness”).

54. See supra notes 3, 6; Molly Crandall, Trademark Law Leaves Legal Marijuana Sellers High And Dry, Law360 (Aug. 27, 2014), http://www.law360.com/articles/570649/trademark-law-leaves-legal-marijuana-sellers-high-and-dry.

55. Section 1(b) of the Lanham Act, 15 U.S.C. § 1051(b), provides that “[a] person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark.” The applicant must submit a verified statement that it has a bona fide intent to use the mark. See, e.g., Spirits Int’l B.V. v. S.S. Taris Zeytin, 99 U.S.P.Q.2d 1545 (T.T.A.B. 2011) (sustaining opposition where applicant was unable to present documentary evidence of its intention to use its mark for some of its enumerated goods when only one such good was available for sale in the United States); Honda Motor Co. v. Friedrich Winkelmann, 90 U.S.P.Q.2d 1660 (T.T.A.B. 2009) (ruling in favor of opposer on summary judgment where an applicant was unable to provide documentary evidence to support intent).

56. Fraud in procuring a trademark registration occurs when an applicant knowingly makes false, material representations of fact in connection with its application with intent to deceive the USPTO. See In re Bose Corp., 580 F.3d 1240, 1245 (Fed. Cir. 2009); Swiss Watch Int’l Inc. v. Fed’n of the Swiss Watch Indus., 101 U.S.P.Q.2d 1731, 1745 (T.T.A.B. 2012). The Trademark Trial and Appeal Board (TTAB) will not find fraud if the evidence shows that a false statement was made with a reasonable and honest belief that it was true, rather than intent to mislead the USPTO into issuing a registration to which the applicant was not otherwise entitled. See Woodstock’s Enters., Inc. (Cal.) v. Woodstock’s Enters., Inc. (Or.), 43 U.S.P.Q.2d 1440, 1443 (T.T.A.B. 1997), aff’d, No. 97-1580 (Fed. Cir. Mar. 5, 1998).

57. Section 43(a) expressly prohibits the use in commerce by a person of “any word, term, name, symbol, or device” that “is likely to cause confusion . . . as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.” 15 U.S.C. § 1125(a)(1)(A).

58. See, e.g., Crystal Entm’t & Filmworks, 643 F.3d 1313, 1321 (11th Cir. 2011) (noting a party must show it adopted the mark and that it made “use in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind”); Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1051 (9th Cir. 1999) (“[A] mark cannot serve a source-identifying function if the public has never seen the mark and thus is not meritorious of trademark protection until it is used in public in a manner that creates an association among consumers[.]”); Allard Enters., Inc. v. Advanced Programming Res., Inc., 146 F.3d 350, 357 (6th Cir. 1998) (“In the absence of registration, rights to a mark traditionally have depended on the very same elements that are now included in the statutory definition: the bona fide use of a mark in commerce that was not made merely to reserve a mark for later exploitation.”).

59. Section 43(a), 15 U.S.C. § 1125(a), provides for a federal civil action where:

Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,

shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

60. The “word, term, name, symbol, or device” and “uses in commerce” language are in reference to infringing activities by a third party, not the unregistered mark rights holder’s.

61. 15 U.S.C. § 1125(a).

62. Id. § 1127 (“The word ‘commerce’ means all commerce which may lawfully be regulated by Congress.”).

63. See, e.g., Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 116 (2d Cir. 2006); Gen. Healthcare Ltd. v. Qashat, 364 F.3d 332, 336 n.6 (1st Cir. 2004); DaimlerChrysler v. The Net Inc., 388 F.3d 201, 205 (6th Cir. 2004); EMI Catalogue P’ship v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 62 (2d Cir. 2000); Bristol Myers Squibb Co. v. McNeil, P.P.C., Inc., 973 F.2d 1033, 1038 (2d Cir. 1992).

64. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992) (Stephens, J., concurring) (noting that Congress has “codified the judicial interpretation of § 43(a), giving its imprimatur to a growing body of case law from the Circuits that had expanded the section beyond its original language” and “explicitly extended to any violation of § 43(a) the basic Lanham Act remedial provisions whose text previously covered only registered trademarks[, and the] aim of the amendments was to apply the same protections to unregistered marks as were already afforded to registered marks”).

65. See supra note 55. “A designation is ‘used’ as a trademark . . . when the designation is displayed or otherwise made known to prospective purchasers in the ordinary course of business in a manner that associates the designation with the goods, services, or business of the user[.]” Restatement (Third) of Unfair Competition § 18 (1995).

66. See, e.g., Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190, 1203 n.5 (9th Cir. 2012) (noting that “courts have begun to accord protection to a particular trademark where the totality of the circumstances suffices to establish a right to use that trademark”); Crystal Entm’t & Filmworks, 643 F.3d 1313, 1321 (11th Cir. 2011) (analyzing “totality of the circumstances”); Johnny Blastoff, Inc. v. L.A. Rams Football Co., 188 F.3d 427, 433 (7th Cir. 1999) (“The determination of whether a party has established protectable rights in a trademark is made on a case by case basis, considering the totality of the circumstances.”).

67. Lucent Info. Mgmt., Inc. v. Lucent Techs., Inc., 186 F.3d 311, 317 (3d Cir. 1999).

68. Patsy’s Italian Rest., Inc. v. Banas, 658 F.3d 254, 267 (2d Cir. 2011) (“A party need not meet the statutory requirement of use in interstate commerce to oppose, or seek cancellation of, a registration based on confusion.”); Grupo Gigante S.A. de C.V. v. Dallo & Co., 391 F.3d 1088, 1096 (9th Cir. 2004) (“[P]riority of use in one geographic area within the United States does not necessarily suffice to establish priority in another area.”); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162 (Fed. Cir. 2002) (“To establish priority, the petitioner must show proprietary rights in the mark that produce a likelihood of confusion. These proprietary rights may arise from a prior registration, prior trademark or service mark use, prior use as a trade name, prior use analogous to trademark or service mark use, or any other use sufficient to establish proprietary rights.” (citations omitted)); T.A.B. Sys. v. Pactel Teletrac, 77 F.3d 1372, 1375 (Fed. Cir. 1996) (“It is well settled that one may ground one’s opposition to an application on the prior use of a term in a manner analogous to service mark or trademark use.”).

69. See, e.g., Nat’l Cable Television v. Am. Cinema Editors, 937 F.2d 1572, 1578 (Fed. Cir. 1991); Malcolm Nicol & Co. v. Witco Corp., 881 F.2d 1063, 1065 (Fed. Cir. 1989) (defining use analogous to trademark use as “use of a nature and extent such as to create an association of the term with the user’s goods”); Lever Bros. Co. v. Nobio Prods., 103 F.2d 917 (C.C.P.A. 1939) (concluding opposer’s use of slogan in advertising constitutes use analogous to trademark use); John Wood Mfg. Co. v. Servel, Inc., 77 F.2d 946 (C.C.P.A 1935) (finding opposer who had not used mark on product or product packaging to have evidenced use “analogous to trademark use” based on use of mark in advertising materials and fact consumers ordered goods by name); 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §§ 16:12–:14 (4th ed.).

70. §§ 1052(e) and 1125(a).

71. See, e.g., Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 216 (2000) (importing § 2 protectability doctrine to determine product design cannot be inherently distinctive); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 767–70 (1992) (applying § 2 protectability doctrine to a § 43(a) claim); AJ Canfield Co. v. Honickman, 808 F.2d 291, 299 n.9 (3d Cir. 1986).

72. Cf. 5 McCarthy, supra note 68, § 27:18 (“While some persons seem to feel that § 43(a), being a separate statutory section, ought to have its own separate and unique set of substantive rules for infringement cases, this is not and never has been the law. Rather, § 43(a) is a federal ‘vehicle’ or ‘platter’ which brings infringement suits into federal court. What is contained in or on that ‘vehicle’ or ‘platter’ is the classic substantive law of trademarks and unfair competition.” (footnote omitted)).

73. Two Pesos, 505 U.S. at 768 (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 858 (1982)). Inwood Labs. provides no explanation of what that “broader range of practices” might be. See 456 U.S. at 858.

74. In Wal-Mart, the Court noted that “[n]othing in § 43(a) explicitly requires a producer to show that its trade dress is distinctive, but courts have universally imposed that requirement, since without distinctiveness the trade dress would not ‘cause confusion . . . as to the origin, sponsorship, or approval of [the] goods,’ as the section requires.” 529 U.S. at 210. Arguendo, a mark with scandalous or immoral matter, or a mark used in unlawful commerce, could be used in such a way as to distinguish one’s goods or services—in the same fashion as any other functioning mark.

75. See 15 U.S.C. § 1125(a)(1)(B), (3); Arizona Elec. Power Coop., Inc. v. United States, 816 F.2d 1366, 1375 (9th Cir. 1987).

76. Strey v. Devine’s Inc., 217 F.2d 187 (7th Cir. 1954) (finding plaintiff with supplemental registration who falsely held himself out to be a doctor on product label and did not list out product ingredients as required by the Federal Food, Drug, and Cosmetic Act could not claim priority of use against arguably junior user); Erva Pharm., Inc. v. Am. Cyanamid Co., 755 F. Supp. 36 (D.P.R. 1991) (holding violation of FDA regulations made use of mark at issue unlawful, and thus plaintiff could not enforce mark); Churchill Cellars, Inc. v. Graham, No. 91193930 (T.T.A.B. Oct. 19, 2012) (holding applicant could not claim priority based on sales of wine prior to obtaining valid license).

77. ZAO Gruppa Predpriyatij Ost v. ZAO Odessky Konjatschnyi Zawod, No. 91161570, 2011 TTAB LEXIS 240 (Feb. 8, 2012); W. Worldwide Enters. Grp., Inc. v. Qinqdao Brewery, 17 U.S.P.Q.2d 1137 (T.T.A.B. 1990) (“The ‘lawful use’ in commerce doctrine is based solely upon the U.S. Patent and Trademark Office’s interpretation of the use in commerce requirement of the Act, as necessitating use in compliance with the other Acts of Congress.”).

78. See, e.g., Churchill Cellars, No. 91193930; Gen. Mills, Inc. v. Health Valley Foods, 24 U.S.P.Q.2d 1270 (T.T.A.B. 1992); Kellogg Co. v. New Generation Foods, Inc., 6 U.S.P.Q.2d 2045 (T.T.A.B. 1988); Satinine Societa in Nome Collettivo di S.A. e M. Usellini v. P.A.B. Produits et Appareils de Beaute, 209 U.S.P.Q. 958, 964 (T.T.A.B. 1981).

79. Satinine, 209 U.S.P.Q. at 964 (declining to find opposer’s use invalid under the Trademark Act); see also id. at 967 (Kera, M., concurring) (“There must be some nexus between the use of the mark and the alleged violation before it can be said that the unlawfulness of the sale or shipment has resulted in the invalidity of an application or registration.”); Gen. Mills, 24 U.S.P.Q.2d at 1270 (not invalidating usage where label noncompliant with FDA regulations); Kellogg, 6 U.S.P.Q.2d at 2045 (same).

80. Blackhorse v. Pro-Football, Inc., 111 U.S.P.Q.2d 1080 (T.T.A.B. 2014); Harjo v. Pro-Football, Inc., 50 U.S.P.Q.2d 1705, 1710 (T.T.A.B. 1999), rev’d, Pro-Football, Inc. v. Harjo, 565 F.3d 880 (D.C. Cir. 2009) (finding laches barred action under the Trademark Act); Harjo v. Pro Football, Inc., 30 U.S.P.Q.2d 1828, 1833 (T.T.A.B. 1994).

81. Andrew Baum, What the “Redskins” Ruling Did and Didn’t Do, Nat’l L.J., Sept. 8, 2014; see also Roberta L. Horton & Joanna Persio, The “Redskins” Blackhorse Decision, Bloomberg Law (June 30, 2014), http://www.bna.com/redskins-blackhorse-decision-n17179891682/ (“The team could continue to assert a claim for unfair competition against trademark infringers under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), which is based on a showing similar to that of infringement of a registered mark.”); Michael McCann, Understanding the Cancellation of the Redskins’ Federal Trademark, Sports Illustrated (June 18, 2014), http://www.si.com/nfl/2014/06/18/washington-redskins-trademark-cancelled-uspto (asserting that the Redskins can still attempt to enforce exclusivity under federal law—specifically section 43(a) of the Lanham Act—even with the cancellation).

82. America’s New Drug Policy Landscape, Pew Res. Center (Apr. 2, 2014), http://www.people-press.org/2014/04/02/americas-new-drug-policy-landscape/.

83. Memorandum from James M. Cole, Deputy Attorney Gen., U.S. Dep’t of Justice, Guidance Regarding Marijuana Enforcement (Aug. 29, 2013), http://www.justice.gov/iso/opa/resources/3052013829132756857467.pdf. Interestingly, the Drug Enforcement Agency has carried out roughly 270 medical marijuana raids under President Obama—12 more than had been conducted in the previous 12 years combined. It is calculated that the Obama administration has spent $300 million in enforcement against medical marijuana businesses since 2008, outspending the Bush administration (both terms) by $100 million. Cf. Gonzales v. Raich, 545 U.S. 1, 27, 29 (2005); United States v. Oakland Cannabis Buyers’ Coop., 532 U.S. 483, 491 (2001).

84. Kal Raustiala & Chris Sprigman, Can Marijuana “Brands” Be Legally Protected against Copying, Freakonomics Blog (Aug. 22, 2012), http://freakonomics.com/2012/08/22/can-marijuana-%E2%80%9Cbrands%E2%80%9D-be-legally-protected-against-copying/.

85. Blevins, supra note 10 (noting a Colorado grower is currently seeking plant patent protection for a “cannabis superstrain”).

86. Colo. Trademark Registration Nos. 20141704390 (“Natural Marley Spirit Marijuana” with profiled lion graphic and cannabis leaf); 20141704090 (“Natural Marley Spirit Cigarettes” with profiled lion graphic); 20141703913 (“Natural Marley Spirit Marijuana” with profiled lion graphic and cannabis leaf); 20141701167 (“Natural Marley Spirit Marijuana Cigarettes” with profiled lion graphic).

87. If the Natural Marley Spirit registrant attempted to use the likeness of Bob Marley, the Marley family could base a claim on Colorado common law right to privacy. In Joe Dickerson & Assocs., L.L.C. v. Dittmar, 34 P.3d 995 (Colo. 2001), the court recognized a tort of invasion of misappropriation of another’s name or likeness or publicity rights. The elements of this tort are: (1) the defendant used the plaintiff’s name or likeness; (2) the use of the plaintiff’s name or likeness was for the defendant’s own purposes or benefit, commercially or otherwise; (3) the plaintiff suffered damages; and (4) the defendant caused the damages incurred. It is unclear whether the use of “Marley” alone without the additional wording “Bob” or an image would rise to the level of misappropriation of another’s name.

88. See, e.g., MARLEY COFFEE, Registration No. 4,254,177 (in connection with coffee).

Rebeccah Gan

Rebeccah Gan is of counsel at Young & Thompson in Alexandria, Virginia. She would like to thank Oron Gan and Christopher Emond for their assistance with this article.