Up In Smoke – Why Medical Marijuana Names May Not Receive Federal Trademark Protection

October 1, 2014 — Leave a comment

Medical marijuana is now legal in 20 states and Washington D.C., making it an estimated $1.53 billion industry. In California alone, approximately $105 million is generated a year in sales tax revenue from medical marijuana dispensaries. While this industry has obvious unique characteristics, it shares a common need with almost all others – a need for trademark protection for its products.

Medical Marijuana Trademark Classification

In 2010, the U.S. Patent and Trademark Office created a new trademark classification: “Processed plant matter for medical purposes, namely medical marijuana.”

According to the Wall Street Journal, over 250 marijuana associated trademark applications were submitted within three months of the creation of this new class. However, the office later removed the classification and announced that it never actually granted a trademark for anything associated with marijuana. Further, the USPTO continues to deny registration for the sale of medical marijuana for various reasons.

“Lawful Use”

First, applicants are likely to run into problems with applications because their “use in commerce” is not lawful.

Although the Department of Justice (“DOJ”) allows states to enable the distribution of medical marijuana by not enforcing federal law, the White House continues to stress that “it is important to recognize that state marijuana laws do not change the fact that using marijuana continues to be an offense under Federal law.”

As a result, the USPTO has denied some applications by stating that the use in commerce is not a “lawful use” in commerce. Therefore, Federal protection is unavailable.

“Immoral” and “Scandalous”

Further, the US Trademark Act (the Lanham Act) prohibits the USPTO from granting trademark protection to marks that consist of “immoral” or “scandalous” matter. These terms are subject to debate, but illegal goods will fall under these definitions and therefore, a mark used for the sale of medical marijuana will likely be prohibited from registration (for more about limitations on registrations, you can read this post about the Washington Redskins trademark dilemma, which is similar to this situation).

How to Resolve The Conflict

Although Federal trademark protection remains unavailable, companies in the medical marijuana industry do have some options. First, they should always conduct a trademark search before creating and using a mark so they don’t infringe potential rights of others and also so they can create and use a unique mark for their product. Second, they can seek state protection through state registrations and common law protection. And third, they can seek Federal registration for goods that are related to their core product (marijuana) in an attempt to get some minimal protection over their marks.

In any case, you should subscribe to Mighty Updates, the MightyMarks® email newsletter to keep up to date on trademark law.

Image: Thinkstock/Gordon Swanson

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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