By Scott Hervey
If voters in California approve Proposition 64 which would legalize the possession and use of marijuana for recreational purposes, it is without question that the sunshine state will see a huge increase in the number of businesses within the cannabis industry. According to a November 7, 2016 Forbes article, the passage of Proposition 64 could add $8.38 billion in annual sales to an already robust medical market worth an estimated $2.83 billion. Despite what happens at the voting polls on November 8, marijuana is still illegal under federal law and this makes branding marijuana strains, paraphernalia or services related primarily to marijuana tricky.
One example of this is the recent problems a cannabis entrepreneur faced in seeking to register two trademarks. JJ206, LLC sought to register the marks POWERED BY JUJU and JUJU JOINTS with the USPTO, for “smokeless cannabis vaporizing apparatus, namely, oral vaporizers for smoking purposes; vaporizing cannabis delivery device, namely, oral vaporizers for smoking purposes.” The Examining Attorney refused registration of the marks based upon lack of lawful use of the mark in commerce.
Under Section 1 of the Lanham Act (15 USC 1051), the registration of a trademark requires use in commerce. Section 45 of the Lanham Act (15 USC 1127) defines “commerce” as all commerce which may lawfully be regulated by Congress. If the goods or services covered by a mark are unlawful, actual lawful use in commerce is not possible, and a refusal under Trademark Act Sections 1 and 45 will be made. But what about the situation where the goods or services are lawful under state law and illegal under federal law.
While vaporizing devices for cannabis may be legal in certain states, they are illegal under the federal Controlled Substances Act (CSA). The CSA makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, defined as “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].” Where goods or services in a trademark application are identified as primarily intended or designed for use in ingesting, inhaling, or otherwise introducing cannabis or marijuana into the human body, it constitutes unlawful drug paraphernalia under the CSA.
JJ206’s argument that it only intends to do business in states which allow for the sale and distribution of marijuana was not persuasive. The TTAB noted that whether a product or service is lawful within a state is irrelevant to the question of federal registration when it is unlawful under federal law. Because “commerce” is defined in the Trademark Act as commerce lawfully regulated by Congress, that which is illegal under federal law cannot be lawful “commerce” under the Trademark Act. As such, any application to federally register any goods or services that are illegal under federal law will be refused, regardless if it is legal under state law.
So what’s a California cannabis entrepreneur to do? One could rely on common law trademark rights. Common law rights arise from actual use of a mark in commerce and no registration is required to establish common law rights. However, enforcement can present the challenge of establishing proof of the date of first use. Additionally, common law trademark rights are limited to the actual geographic scope of use established through evidence.
State trademark registration would be an improvement over common law rights. In California registration is prima facie evidence of ownership of a valid mark and the exclusive right to use the mark for the covered goods or services within California. Granted seeking registration in California and the other states in which marijuana is legal may not be as convenient or cost effective as a single federal registration and you can’t file based on intent to use, but it is still preferred over relying on common law rights.
Another strategy would be to seek registration for an ancillary product or service that does not violate the CSA. The application could be filed based on either use in commerce or intent to use. If the mark is registered, the owner would be entitled to argue that the subsequent use by a third party would cause likelihood of confusion and infringe its trademark rights.