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.