Marijuana and Federal Trademark Law

“Hemp is of first necessity to the wealth and protection of the country.” ~Thomas Jefferson

With the ringing in of the New Year, California has become the latest state in which adult residents may legally purchase marijuana for recreational use. There are now seven states in the country, in addition to the District of Columbia, where such purchases have been approved by their legislatures. Additionally, other states and municipalities have decriminalized the possession of small amounts of marijuana. With the increasing acceptance of the drug, more and more people are exploring the possibility and challenges of becoming marijuana entrepreneurs.

Just as any new business owners seek to safeguard their investments, these entrepreneurs are investigating ways to promote their brands. One effective method of establishing brand protection and promotion is to acquire a federal trademark registration. However, because marijuana is still illegal at the federal level, trademark applicants must be cautious when promoting and advertising their trademarks.

To qualify for federal trademark registration, the mark must be used in lawful commerce. Any goods or services to which the mark is applied must comply with all applicable federal laws. The Controlled Substances Act (CSA) prohibits, among other things, distributing, dispensing, or possessing certain controlled substances, including marijuana and marijuana-based preparations. In addition, the CSA makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia. This includes any paraphernalia or product which is primarily intended or designed to facilitate the ingestion or introduction into the body of a controlled substance, possession of which is unlawful under the CSA.

An applicant may lawfully register a mark for use with tobacco products, such as electronic cigarette refill cartridges. But to the extent that a trademark used to designate a tobacco product could also be used for marijuana or marijuana-based products, the applicant must exercise strict diligence so as not to advertise the mark for any unlawful purpose. As part of its registration process, the United States Patent and Trademark Office (USPTO) will review the applicant’s specimen to see how it will appear in commerce to consumers. They may also review parol evidence. For instance, the USPTO , at its discretion, may review the applicant’s website and social media pages to determine that the applicant is making a bona fide or lawful use of the mark. If an applicant applies for a mark for use with tobacco products, but advertises it on its social media pages for use with marijuana or marijuana-based products, the USPTO will refuse to register the mark. Additionally, the applicant should monitor how its consumers are referencing products designated by its trademarks to ensure that the primary purpose is not associated with unlawful use.

At the heart of an USPTO decision to deny registration to a mark is an unfavorable assessment of the primary purpose for which the goods or services are used. As long as marijuana is listed as a controlled substance under the CSA, the USPTO will continue to monitor and deny registrations for trademarks that tend to be primarily associated with marijuana and marijuana-based products.

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