As of October 2015, four
states have legalized marijuana for recreational use: Alaska, Colorado,
Oregon and Washington. The recreational marijuana movement-although
slow in terms of states following by legalizing use-has had some big
numbers to back up its success: for example, Colorado brought in $36.5 million in tax revenue through the first 11 months of 2014.
Marijuana is clearly a big business, with no signs of slowing down
anytime soon. We all know branding and protecting your trademarks are
important for any business. However, for a business dealing with "taboo"
products -i.e., marijuana-building a brand and controlling the brand is
particularly important. As you've undoubtedly heard before, there are
several strategies for protecting your trademarks and brand. For the
vast majority of these businesses, this includes filing federal
Unfortunately for both recreational and medical marijuana
dispensaries, this is simply not an option. But how can this be?! The
Lanham Act-the controlling statute on trademarks in the United
States-has been interpreted by the United States Patent and Trademark Office
and courts to only allow federal registrations for trademarks used
lawfully in commerce. Because marijuana remains a Schedule 1 drug under
the Controlled Substances Act-which prohibits the manufacture,
distribution, possession and sale of marijuana and other
drugs-dispensaries are technically violating federal law, even if a
state has legalized recreational and medical marijuana use. Thus, under
the Lanham Act, the manufacture, distribution, possession and sale of
marijuana does not qualify as lawful use and will be prohibited from obtaining a federal registration.
Although federal registrations aren't available for marijuana itself
and certain activities surrounding it, there are still several things
these companies can do to protect their brands.
Conduct a Trademark Clearance Search
Just because you cannot obtain a federally registered mark, doesn't
mean you should adopt and begin use of a mark without conducting a
search of what is currently out there. Trademark rights are based on
use. Without a federal application/registration, trademark owners obtain
use in their geographic market area. You want to make sure you are
clear to operate in your geographic market area (and preferably in all
File State Trademark Registrations
In a state that has legalized marijuana, it is likely you will be
able to obtain a state trademark registration. If you are doing business
in other states where it is legal, file applications in those states as
well. The difference between common law and a state registration is
that a state registration immediately gives you rights over the entire
state, even if you are not technically in a certain area of that sate.
File Federal Applications on Ancillary Goods
Not all goods and services in the marijuana industry are prohibited
under the Lanham Act. In fact, there are several live registrations on
the USPTO's website for various goods and services related to marijuana.
File a Federal Intent-to-Use Application and Wait it Out
An intent-to-use application is one over a mark that has yet to be
used in commerce. This application allows trademark owners to hold a
place in line until they are ready to launch their product in the
marketplace. An intent-to-use application can be drawn out for as long
as 4 to 4.5 years before the applicant is required to begin using the
mark in commerce. Who knows, maybe in four years the federal laws will
have changed and the Lanham Act will allow trademark registrations over
Marijuana businesses aren't totally out of luck when it comes to
trademark protection, even if federal registrations are currently off
the table. The above steps should provide a level of protection to help
secure brands and trademarks until this issue is resolved.
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well as to give you general information and a general understanding of
the law, not to provide specific legal advice. By using this blog you
understand that there is no attorney client relationship between you and
the Blog. The Blog should not be used as a substitute for competent
legal advice from a licensed professional attorney in your state.