A Brief History
Producers of cannabis products often find themselves facing an unexpected surprise should they decide to try and protect their brand with a federal trademark. The Trademark Act of 1946, more commonly known as the Lanham Act, is a federal statute that governs what kind of marks are eligible for registration. Beyond the basic need for a trademark to be distinctive and used in commerce at the time of registration, the Lanham Act also states that products and services sold by a business must be “lawful” in order for a business to be eligible for trademark protection. As cannabis is currently not legalized under federal law due to the Controlled Substance Act, cannabis business owners who reside in states where it is legal often find they cannot garner the trademark protections they want, including bringing lawsuits for cases of infringement.
Further, recent Federal Trademark case law generally does not bode well for business owners that buy and sell cannabis products. In 2017, PharmaCann LLC, a cannabis company, attempted to circumvent restrictions on trademarking by posing their company as “retail store services featuring medical marijuana.” An examining attorney found this to be in violation of the Lanham Act. The company then tried to point to the Rohrabacher-Farr Amendment, which blocks the federal government from using federal funds to prevent state level medical cannabis laws. However, since this had nothing to do with the legality of cannabis at the federal level, but instead only prevented the use of federal funding, it was promptly dismissed. In a similar case in 2013, a company called JuJu Joints pointed to the Cole Memo, which states the federal government will avoid prosecuting cannabis businesses in jurisdictions where it was locally legal. However, this too met a similar ruling.
Interim Solutions for Trademark Protections
While these cases demonstrate how the United States Patent and Trademark Office is firmly set on disallowing cannabis mark registration, there are other cases that give hope in certain circumstances. Businesses that only sell goods that are indirectly related to cannabis may be allowed federal trademark protections. This safe haven only extends to products and companies whose uses do not “touch the plant.” This includes companies that provide consumer information regarding cannabis of any kind (e.g., blogs, articles, digital content, etc.), companies that create or sell paraphernalia such as rolling paper, grinders, vape accessories (indicating none of these are used for cannabis), or companies that host events or seminars related to cannabis.
Companies which do sell cannabis products may also take refuge in state trademark registration. While not as nearly comprehensive in providing protection as a trademark registration on the federal level, these state level trademarks can provide some degree of legitimacy for a mark in their jurisdiction. Since many states now legalize medical and recreational usage of cannabis, a large number of these states will now accept trademarks on related products due to compliance with state law. New York is one state where cannabis related goods and services have been granted state trademarks. Before applying, a trademark attorney should be consulted in order to determine if the filing process is done correctly and your mark can be afforded the protections you want in the appropriate jurisdiction.
While these workarounds of the current state of federal trademark law provide many advantages and protections, they are still not as comprehensive as a federal level trademark for cannabis goods and products. Many hope that the Lanham Act will soon be reexamined and modified by Congress so that in a world where cannabis is becoming legalized more and more, a pathway to federal trademark registration can finally be opened.
Our firm can help you with questions or inquiries regarding intellectual property protections for cannabis based and related products and services. If you have questions, please contact any member of our firm or intellectual property group via our website or call us at 585-730-4773. Please note that any embedded links to other documents may expire in the future.
This Legal Briefing is intended for general informational and educational purposes only and should not be considered legal advice or counsel. The substance of this Legal Briefing is not intended to cover all legal issues or developments regarding the matter. Please consult with an attorney to ascertain how these new developments may relate to you or your business. © 2021 Law Offices of Pullano & Farrow PLLC