Marijuana Products Face Rigorous Scrutiny in Federal Trademarking
Marijuana legalization in the Golden State momentarily felt like the golden dawn of weed reform. Then the new ultra-conservative Department of Justice made its presence known, not quite raining on the parade as much as sending out some warning rumbles of thunder from the horizon. Empty threats aside, anyone in the industry knows that legitimately selling marijuana products in a federally illegal environment is far from an ideal situation. With so many states legalizing in 2016 and more rushing to pass legislation ahead of the administration shift, questions have naturally turned to the trademarking of marijuana products. Massive amounts of money are being poured into cannabusiness, but trademarking can still be a sticky situation requiring plenty of tact, luck, and most of all, money.
The USPTO Hard Line
Succinctly put, the United States Patent and Trademark Office (USPTO) will not file trademarks for marijuana products. Initially, the USPTO didn’t put such a hardline up to the cannabis industry. For a brief period following Colorado’s legalization, the USPTO kept an open mind to marijuana businesses. But the surge of trademark applications for marijuana-based products proved too much for the organization to handle. Somewhere buried deep beneath the mound of paperwork, the USPTO denied the trademark application for all marijuana products, returned all application fees, and instituted the hard line. This would seem fairly bleak and hopeless but U.S. law is often malleable to verbal acrobatics.
Update: California Allows Trademarking at the State Level
When this blog was originally published in 2017, Jeff Sessions was still running his anti-cannabis crusade from a prime seat in the Department of Justice. These days, Sessions is out and, while the actual situation hasn’t changed that much, it does feel like the industry can breathe easier. However, even amidst those dark days, California went its own way with trademarking on January 1, 2018 when the Golden State began accepting trademark applications for cannabis products. This doesn’t mean that the USPTO has started to register marijuana products. However, California businesses seeking a California-specific trademark have been given clearance to apply as of January 1, 2018, when cannabis sales became legal. Anyone hoping to get a leg in the door with the USPTO will be disappointed. Registering a cannabis trademark in California has no effect on future trademark applications at the federal level.
Applying Trademarks to Anything but Marijuana Products
Some cannabis companies are trying to trademark their logos and other branding tools without directly applying the trademarked material to marijuana itself. For example, marijuana companies can trademark their logos for use in clothing, pens, Bobbleheads…whatever you can think of as long as the logo’s use is “lawful.” Keep in mind this is referring to federal law as opposed to state law. If the USPTO can’t determine a “lawful” utility for your product, they will almost definitely deny the trademark application. For example, if you run a company that is involved with marijuana products but you are trying to register a trademark on your logo for use on a beanie, you’re likely to avoid static from the USPTO. Now, if you try to apply the same logic to filing a trademark on herb grinders, you’re probably going to run into more issues though you may have success if you can convince the USPTO that the primary use of your product is as a tobacco grinder. Now, if you have a pot leaf or any other weed symbol emblazoned across the grinder, you'll find it tough to convince the USPTO that your product is not in violation of the Controlled Substances Act. With products that walk the line, it's often helpful to have the aid of a professional legal team behind your company.
Looking Beyond the Bud
If your company is known for its killer bud but your trademark only extends to some T-shirts and keychains, what good is it? At this point, it’s a matter of faith. Many weed companies are trying to get their trademarked branding on definitively non-weed products as a means of setting some sort of precedent they hope will help them secure full branding rights on weed products when marijuana is eventually legalized on a federal level. It’s a risky move with no guarantees but the alternative, doing nothing, is certain to produce no rewards. By registering trademarks on periphery products, some businesses believe they are significantly increasing their stake on claiming the trademark for marijuana products in the future. They also often believe that these periphery products can serve as enough of a statement of intention to intimidate those who may attempt a knock-off of their branding or products. But there’s another hurdle to climb in this approach. Companies need to actually sell the trademarked products or they stand a good chance of losing the rights to their trademark. That means an extract company that put their trademark on baseball caps better hope to sell enough baseball caps to justify the trademark. This is really just an introduction to the ever-shifting landscape of how trademarking works for marijuana products.
Until recently, CBD oil and similar products seemed like fair game to the USPTO but the DEA’s archaic proclamation outlawing CBD oil has no doubt thrown those trademarks into a place of contention. (EDIT: Since the original publication of this blog, a 2018 Farm Bill was passed that will likely allow trademarking of CBD products at a federal level). A rather illuminating piece was published recently in Cannabis Business Times following author Kenneth Morrow’s path through the rigors of trademarking marijuana products dating back to the mid-‘90s. But even this article, less than 2 months old, cites CBD oil as somewhat of a safe zone. To echo Morrow’s ultimate advice, these tumultuous seas are best navigated with a lawyer who understands cannabis products and intellectual property. It can cost substantial money, but the marijuana industry is still a place that offers lucrative rewards with its dizzying risks.