Trademarking Cannabis Related Goods and Services – A Sticky Road
I have been asked by several client’s recently about obtaining US federal trademark registrations for cannabis related goods and services. The short answer is that trademarks for cannabis related goods and services are not registrable under federal registration with limited exceptions. I have posted this legal guide to explain the pitfalls in the trademark application process.
Related Goods and Services - Cannabis Terms
Goods and services associated with marijuana in all forms, derivatives thereof and devices for the delivery of same; food and beverages containing marijuana, cannabis or THC; marijuana plants, strains and cultivation; and marijuana dispensaries, clinics and collectives.
Reason for Refusal - Not Lawful Use in Commerce
The use of Cannabis Terms in the goods or services descriptions will likely trigger an automatic refusal from the examiner based on US Trademark Act Sections 1 and 45, 15 USC 1051 & 1127 - Not Lawful Use in Commerce (NLU). The reasoning behind a Section 1 and Section 45 refusal is based on the requirement that the mark is either in use or there is intent to use the mark in commerce. The word "commerce" means all commerce which may lawfully be regulated by Congress. Hence, to qualify for a federal registration, the use of a mark in commerce must be lawful.
Controlled Substances Act (CSA) and Marijuana
The Controlled Substances Act (CSA) prohibits, among other things, the manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and marijuana-based preparations. 21 USC 812, 841(a)(1), 844(a); see also 21 USC 802(16) (defining "marijuana"). In addition, the CSA makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, ie, "any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA]." 21 USC 863.
Medical Marijuana also Not Lawful Use in Commerce
As long as marijuana and THC remain as Schedule 1 Controlled Substances, there will be no consideration given by an examiner to the medical use of marijuana as by definition, Schedule 1 substances have no known medical use. The fact that marijuana has been approved for medical use in 23 states and the District of Columbia has no bearing on whether, for federal trademark purposes, the mark has a lawful use in commerce.
A refusal for a mark representing goods or services wherein the descriptions contain a Cannabis Term may be challenge provided the mark owner is willing to provide the following:
1. Detailed Information About the Goods or Services.
The applicant must submit additional information about the goods and/or services. The requested information should include fact sheets, brochures, advertisements, and/or similar materials relating to the goods and/or services. If such materials are not available, applicant must provide a detailed factual description of the goods and/or services. Any information submitted in response to this requirement must clearly and accurately indicate the nature of the goods and/or services identified in the application.
2. Written Statement of Conformance with the CSA
The applicant must submit a written statement indicating whether the goods and/or services identified in the application comply with the Controlled Substances Act.
3. Answer Specific Questions About the Use of the Goods or Services in the Negative
Typically, the applicant must provide a written response to specific questions regarding the goods or services. For example, the applicant will be asked if the identified goods or services include or facilitate the sale, distribution, cultivation, procurement, dispensing or delivery of marijuana or items containing marijuana?" Obviously the applicant must respond in the negative in order to meet the requirements for registration.
Rebuttals on Technical Grounds
Successful rebuttals for NLU have been made where the applicant has argued that it has limited its goods to cannabis seed extract or mature cannabis stem extract. Since the mature stalks and preparations from the seed and mature stalks, or hemp, are not lawfully considered to be marijuana under the CSA, the goods are lawful. Similarly, refusals have been reversed where the applicant has argued that the brand of goods is derived from legal hemp oil or Cannabiodiol (CBD) and since the FDA considers cannabinoids derived from hemp to be food-based products, no legal restrictions exist.
Distinctions - Exceptions
Not all classes which contain Cannabis Terms receive the same scrutiny. For example, a mark in class 041 for educational services will likely not be refused for services related to providing educational information regarding cannabis or marijuana. However, the mark may well be refused if the services provide information on where to purchase or obtain cannabis or marijuana, or services related to the cultivation or sale of marijuana plants.
If there is any appearance or indication in the mark, goods or services, or any suspicion by the examiner that the goods or services relate to marijuana, cannabis, cannabinoid or THC or the use thereof, the application will likely be refused for Not Lawful Use in commerce.
Applicant should be aware that the examiner will look to external sources for information (an applicant's website, brochures, advertisements, etc) regarding the goods or services described in the trademark application.
It is important for the applicant to review these materials prior to filling a Cannabis Mark application for any indication of marijuana content in the goods or for terms related to the provision or cultivation of marijuana in the services.
Applicant should assume that in order to obtain registration for a Cannabis Mark, there must be no indication that the goods contain marijuana, cannabis or THC, or that the services involve the provision, sale, use or cultivation of marijuana.
Trademark Counsel trying to register Cannabis Marks should keep a keen eye on any legislative process involving the re-scheduling of marijuana under the Controlled Substances Act.
Stoned Walled: Review of US Trademarks and Applications Representing Goods or Services Associated with Marijuana and Cannabis (Alan Kendrick, Intellectual Property Magazine March 2015).