It is no secret that the United States Patent and Trademark Office (USPTO) has taken a hard-line stance when it comes to cannabis-related trademarks, specifically when it comes to marks used in connection with the sale of cannabis products and drug paraphernalia. In order to register a trademark with the USPTO, an applicant must adhere to specific legal requirements contained in the federal Lanham Act, including lawful use of the applied-for mark in interstate commerce.
Given that the possession, distribution, and manufacture of cannabis remains illegal under federal law via the Controlled Substances Act (CSA), the lawful use in commerce requirement poses unique challenges to the cannabis industry.
As a result, cannabis attorneys have pursued federal trademark protections on behalf of cannabis clients through a variety of legal strategies, including securing federal trademark registrations for ancillary (non-plant-touching) products like hats, t-shirts, and smoker’s articles under the same brand name used to market the applicant’s cannabis products.
Another strategy involves the filing of an Intent to Use application, which requires the applicant to demonstrate use of the applied-for mark in commerce through the filing of a future addendum, which would theoretically require the applicant to delay registration until the end of federal prohibition, but could cause problems if a non-cannabis-related company applies for the same mark prior to a change in federal law, provided that company is making lawful use of the applied-for mark in interstate commerce.
Prior to the USPTO crackdown on cannabis-related trademark applications a few years ago, cannabis trademark attorneys could submit applications containing broad, ambiguous terminology and without any explicit or implicit reference to cannabis to avoid an initial refusal of the applied-for mark. However, the USPTO has made it abundantly clear that this strategy will not work anymore, as USPTO Examining Attorneys are quick to investigate any trademark application that may relate to cannabis, which can include a review of the applicant’s website or advertising materials found online.
Given the state of cannabis-related trademarks at the USPTO, it was hardly a surprise when I received an initial response from the USPTO Examining Attorney reviewing the federal trademark application submitted on behalf of a client, Cannaline, a company providing customized packaging solutions to the cannabis industry. The initial inquiry and statutory refusal was expected as with any other cannabis-related application, but especially given that the Examining Attorney who reviewed the file happens to be the same attorney that refused registration for a number of marks used in connection with drug paraphernalia, decisions that were ultimately upheld by the Trademark Trial and Appeal Board (TTAB) on final appeal.
However, it was certainly an exciting surprise to find that the initial refusal was withdrawn following the submission of a response on behalf of the client, as it is the first time the USPTO has issued a federal trademark used in connection with drug paraphernalia. While USPTO rules make clear that the issuance of a federal trademark for an applicant in one case does not mean that the USPTO will issue a trademark used in connection with drug paraphernalia as a matter of course moving forward, the first-of-its-kind federal trademark registration for drug paraphernalia is a welcome departure from the USPTO’s historical treatment of cannabis-related trademark applications.
I have provided a more expansive discussion of the various legal issues addressed in my response here in an effort to provide insight to curious legal practitioners and readers who want more information on this topic. However, the primary takeaway for readers with limited time or interest in the subject remains the same: the ability to secure federal trademarks used in connection with drug paraphernalia would generate significant benefits to the cannabis industry.