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. Traditionally, marijuana and its attendant paraphernalia were treated as subject matter incapable of registration because they were and are still illegal under federal law.
In April 2010 the USPTO created a new trademark category: processed plant matter for medicinal purposes, namely medical marijuana. 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.
One toke (too far) over the line. By July 2010 the USPTO 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.
In further retreat from its April 2010 policy, the USPTO examining attorneys were advised to make use of their power to issue formal requests for information and specifically ask applicants if “the goods or services at issue violate the federal Controlled Substances Act [CSA].” 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. The applicant also had to state that its services were lawful pursuant to the CSA.
Medical marijuana is now legal in 23 states and Washington, D.C., making it an estimated $2.7 billion industry. The inability to secure federal trademark registration puts pot brand owners at a clear disadvantage. Brands are generally valued higher when federal registration is secured. Lack of federal protection hampers claims of priority of use by brand owners. Accordingly, cannabis companies must look to a patchwork protection approach involving state laws, copyright protection, and federal unfair competition law.
Homegrown remedies at state common law and state registration. Trademark rights in the United States stem from use in commerce, and the federal Trademark Act does not preempt state common law rights. As such, marijuana brand owners still maintain state common law trademark rights that allow these brand owners to claim trademark rights throughout a given state, even if the entity does not operate statewide. Generally an inexpensive process, 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. For example, the state registration will be revealed in trademark searches run by other potential users. State registration also may help establish prior use of the mark in a state infringement action.
Copyright cures. The Copyright Act contains almost no prohibitions on the subject matter of the nature of a work subject to copyright protection. Federal copyright protection has been extended to a variety of marijuana-content works, including cannabis grow guides and cookbooks.
The Copyright Act’s chief limitation is to the level or originality in a given work. The act provides a decidedly low bar to registration, requiring only “a minimal degree of creativity.” 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, as long as the foregoing contain sufficiently original and creative content to be copyrightable. Similarly, copyright protection could extend to the design aspects of “useful articles[.]”
Mixing up the (federal registration) medicine. Marijuana brand owners can still seek and obtain federal protection for their lawful commerce goods and services ancillary to their pot-based businesses. However, the CSA restricts drug paraphernalia in addition to the drugs themselves, so the plethora of pot-infused food and beverages, oils, creams, and smoking implements would not qualify as “lawful commerce” goods. There also are significant hurdles for marijuana brand owners in attempting to register “lawful” ancillary goods and services. Ancillary goods can be registered only if they are capable of being used outside the cannabis context. Moreover, a service mark can be registered only for activities that constitute services as contemplated by the Trademark Act.
Section 43(a) protection: Pipe dream or possibility? Section 43(a) of the Trademark Act provides protection for unregistered trademarks from unfair competition, as long as the marks have been used in the sale of goods or services. On its face, Section 43(a) does not define the type of use that creates enforceable common law rights in unregistered marks. Instead, Section 43(a) addresses only the preconditions for determining infringement of an unregistered mark.
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) 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, for example, 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.
It is untested whether Section 43(a) would allow for the protection of unregistered cannabis 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.
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 but later decriminalized and deemed worthy of federal protection. In the meantime, marijuana businesses and their consumers are clearly disadvantaged by the bar to federal trademark registration. Whether or not protection under Section 43(a) as an unregistered mark is available remains an open question. Accordingly, 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.
ABA Section of Intellectual Property Law
This article is an abridged and edited version of one that originally appeared on page 18 of Landslide®, May/June 2015 (7:5).
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