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Marijuana’s Role in the Pursuit of Trademark Rights

Posted on Nov 29, 2016 in Articles

This article appeared in the Legal Intelligencer on November 22, 2016.

Last month, in this column, we ­discussed the patentability of ­marijuana. It was explained that numerous marijuana-related patents already exist and more are expected to be granted. The issues associated with trademarks and marijuana, however, are substantially different.

Earlier this month, the Trademark Trial and Appeal Board (TTAB) refused to register the trademark JUJU Joints “based upon lack of lawful use of the mark in commerce …,” In re JJ206, dba JuJu Joints, case numbers 86474701 and 86236122 (TTAB 2016). The mark is for “smokeless marijuana or cannabis vaporizer apparatus …” and “vaporizing marijuana or cannabis delivery device …” Trademark rights in the United States are granted based on use of goods and services in commerce. The trademark examining attorney in the U.S. Patent and Trademark Office (USPTO) argued that if either a trademark or the goods and services associated with the trademark are unlawful, then “actual lawful use in commerce is not possible.” Registration was thus refused. The TTAB affirmed.

Under federal law, the sale and/or use of marijuana is illegal based on the Controlled Substances Act (CSA). Devices that ­introduce marijuana into the human body are thus considered to be illegal under the CSA. Since use of the applicant’s devices in commerce was determined to be “a legal impossibility,” the board affirmed the trademark examining attorney’s decision to refuse registration of the mark.

Interestingly, several federal trademark registrations have been granted for marijuana-related goods and services. Included in that list are the following: Cannabis Energy Drink (for “Energy drink … containing cannabis seed extract”), CCOP (for “Retail store services featuring hemp-based products”), MJ Freeway (for “Computer services for use among medical marijuana centers”), and MJARDIN PREMIUM CANNABIS (for “Industrial and engineering design services in the field of agriculture”). The existence of these registrations was pointed out by JuJu Joints, but the TTAB was not swayed (“each application must be considered on its own record …” and “… the PTO’s allowance of such prior registrations does not bind the board …”).

And what about the fact that, despite federal law, the sale and/or use of marijuana has been legalized in a number of states? Should trademark registrations be granted based on the legality of marijuana in those states? Again, the TTAB did not agree with that argument: “The fact that the provision of a product or service may be lawful within a state is irrelevant to the question of federal registration when it is unlawful under federal law.”

The intersection of patents and marijuana differs substantially with that of trademarks. Patents are granted without regard to the legality of the underlying invention. “Congress never intended that the patent laws should displace the police powers of the states, meaning … those powers by which the health, good order, peace and general welfare of the community are promoted,” as in Allen v. Riley, 203 U.S. 347 (1906). As a result, the USPTO has granted several patents that are marijuana related. U.S. Patent Number 6,630,507 for Cannabinoids as Antioxidants and Neuroprotectants issued in 2003 and is currently owned by the U.S. Department of Health and Human Services (HHS). Various patents have issued over the past few years for inventions such as cannabis preparation, cannabinoid containing plant extracts, and smoking apparatus. Several marijuana plant ­patent applications have been filed and it is possible that they will result in issued patents.

What then is the reason that ­marijuana-related patents have issued while marijuana-related trademark registrations have been refused? In refusing registration of the mark JuJu Joints, the TTAB relied on 35 U.S.C. Section 1051 and 35 U.S.C. Section 1127. These sections of the U.S. Code allow the owner of a trademark “used in commerce” to request registration of that mark, in order to obtain the advantages of trademark registration (such as the ability to file suit for trademark infringement in federal court). The TTAB’s decision, however, interprets the statutes as requiring “lawful” use for a mark to be registrable. The ­decision further cites legal precedent requiring “lawful” use for a mark to be registrable, which is interesting because nowhere in the statutes does the phrase “lawful use” appear.

Then there is the issue of the Cole Memo, a U.S. Department of Justice memorandum that addresses the legality of marijuana in certain states and sets forth “enforcement priorities” in view of the illegality of ­marijuana under the CSA. That memo articulates the goal of federal enforcement of the CSA to include “preventing distribution of marijuana to minors, preventing violence and firearm use in marijuana-related ­activities” as well as preventing marijuana from being diverted to states where it is illegal (from states where it is legal). The Cole Memo was also provided to the TTAB to prove that the mark JuJu Joints was being used with goods in a lawful manner. The TTAB rejected that argument as the Cole Memo does not override the CSA.

For now, it appears that trademark ­registration applications directed toward marijuana-related goods and services will continue to be refused by the USPTO. Will the Trump presidency change all of that? It is hard to tell. Last year, the Washington Post quoted Donald Trump as saying, “In terms of marijuana and legalization, I think that should be a state issue, state-by state.” With regard to intellectual property issues, Trump is no stranger to trademarks—he has filed hundreds of trademark registration applications in the United States and has spent years fighting for registration of the mark “Trump” in China. The Trump candidacy platform, however, has said very little about intellectual property. The “positions” page on his website refers to “illegal activities” by China “including its theft of American trade secrets …” He has not, however, articulated any specific statements regarding intellectual property protection within the United States. The Trans Pacific Partnership (the proposed largest trade deal in history) has significant requirements regarding trademark protection. But none of those stipulations would directly affect the ability of an applicant to obtain trademark protection for marijuana-related goods and services, and the agreement is not expected be ratified under a Trump presidency ­anyway. The director of the USPTO is a political appointee. The current director of the USPTO, Michelle Lee, will thus certainly be replaced after Trump comes into office. The policies of the USPTO, as a result, will change, but exactly how is a complete unknown.

In the meantime, there are still trademark registration applications for ­marijuana-related goods and services pending with the USPTO. Those registration ­applications will probably be refused unless the law changes. Trademark registrations, however, have significant value to any trademark owner, and thus companies with marijuana-related businesses will continue to try to obtain trademark registrations.

– By Lawrence E. Ashery

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