California Homegrown: Protect Your Pot!
May 29 2015
By: Josh H. Escovedo
Let’s face it, we live in a progressive era. Many things that were once taboo in the eyes of the law have become not only socially acceptable, but legal. For example, twenty years ago, if a California state police officer saw you walking down the street smoking what he knew to be marijuana, you were unlikely to walk away without at least a citation. Now, that same officer would have to think twice before jumping to a conclusion and writing you a citation for possession of marijuana, because it is now legal to possess cannabis for medically related purposes in this state. In fact, as of the date of this article, 23 states and the District of Columbia have legalized the possession of marijuana in some form. Four states have even legalized it for recreational use.
At this point, you are likely wondering why I am yammering on about the legalization of marijuana in an intellectual property article. Not only is it unrelated, but honestly, its old news. However, the booming business that is emanating from the legalization of marijuana is not old news. That is exactly what I am here to discuss. If you have read any of my previous articles, you know that I am a strong proponent of protecting the goodwill in your brand through the federal trademark laws. This should not come as a surprise; it is more beneficial and less costly for my clients to retain my services for preventative intellectual property counseling than it is for litigation, or to lose goodwill in their brand.
Unfortunately, the typical avenues for protection are largely unavailable for individuals and entities in the marijuana business. The United States Patent and Trademark Office only registers marks that would be in lawful use in interstate commerce. It has even gone as far as refusing to register a mark such as MARIJUANA COOLERS for herbal food beverages on the ground that the wording in the mark “plainly indicates” that the goods include a substance prohibited by the Controlled Substance Act.
The Controlled Substance Act is the primary reason that proprietors in the marijuana business are unable to register their marks. The act renders the possession, sale, and use of marijuana illegal under federal law. This may sound familiar because the conflict between federal and state law is often discussed with respect to states that have legalized marijuana use in one form or another. Thus, in the eyes of the federal government, regardless of the state’s marijuana laws, the activity is illegal. The United States Patent and Trademark Office is a branch of the federal government. So, in the eyes of the United States Patent and Trademark Office, the activity, whether use, distribution, or something else, is illegal and it will likely deny any attempt to register a mark for marijuana itself. However, one may be able to register their desired mark on tangentially related items such as t-shirts or hats bearing the strain of marijuana’s name. This provides no protection at all for sale of the actual marijuana, but at least it provides some protection to tangentially related goods.
So, what else can you do? Well, just because the United States Government refuses to register the mark, it does not mean that the state government will refuse to register the mark as well. In fact, presently, this may be the most viable source of trademark protection for the marijuana itself. If the state, let’s say Colorado for example, has legalized the use, distribution, and sale of marijuana, it is not likely to refuse a trademark registration for such goods. It is not illegal so there does not seem to be a justifiable reason to refuse registration. However, this solution is not without downside. In contrast to its federal counterpart, the registration only provides protection in that state. Thus, the owner of the mark Ghost Train Haze with regard to marijuana in Colorado could not use his state trademark registration to sue a marijuana distributor in California, who is also marketing a strain that he calls Ghost Train Haze. It is unclear at this time whether the holder of the mark in Colorado could bring suit under common law, but such rights are typically narrowly construed and restricted to the geographic region where the product has historically been sold.
Thus, it would obviously be best for the holder of the mark if they were able to simply obtain a federal trademark registration, but that is not currently an option. Again, this does not mean that the marijuana proprietor is without some protection for his brand; a state trademark registration is a reasonable alternative. However, individuals in the business should keep tabs on the evolving state of the law and pounce on the opportunity to obtain a federal registration, if the federal government position ever happens to go…up in smoke.