Protecting the Intellectual Property of Your Marijuana Business

By: Charles Feldmann, Esq.

With the proliferation of medical and recreational marijuana businesses nationally, protecting the intellectual property of your marijuana company is becoming increasingly important, yet it can be legally difficult. Trademarks are controlled by federal law. To obtain a federal trademark registration, a legal prerequisite is that the mark be lawfully used in commerce. The sale of marijuana in interstate commerce is unlawful and a clear violation of the federal Controlled Substances Act, 21 U.S.C. § 801-971 (“CSA”). The United States Patent and Trademark Office (“USPTO”) has removed all International Class of Goods and Services descriptions relating to marijuana because a trademark used on or in connection with such goods or services cannot be lawfully used in commerce.

Under current USPTO protocol, a trademark used in commerce or in connection with goods or services relating to any of the aforementioned illegal activities will be refused registration on grounds that the trademark is not being lawfully used in commerce, as its use violates the CSA.

However, protecting the name and brand of your marijuana company is just as important as it is to any other company in any other industry. Trademark law serves to protect the reputation you have worked hard to establish for your brand and to protect that good will in the minds of your consumers. Marijuana companies can be at a distinct disadvantage since they cannot protect their names, slogans, and logos under an International Class of Goods and Services description relating specifically to marijuana. It is to be anticipated that ubiquitous trademark infringement will diminish the integrity of the industry by blurring brand identity and distinction among independent marijuana companies who have labored to distinguish themselves among competition in a new industry with unprecedented growth.

However, there are creative legal strategies you should take advantage of in order to successfully register your trademarks with the USPTO and protect your intellectual property, despite the USPTO’s reluctance to protect a marijuana-related trademark. There are important legal distinctions that can be drawn between your company and the illegal sale of marijuana under the CSA in order to establish lawful use in commerce and successfully prosecute your trademark application and obtain federal registration.