It seems like it has always been an uphill battle for businesses in the marijuana business. Skating on the precipice of state laws, on one side, that may allow for widespread distribution of marijuana in the state, and federal laws, on the other, which criminalize such sale across state lines, owners of these businesses must tread carefully in finding the right way to expand their businesses. One obstacle facing so-called “potrepreneurs” is how to rely on certain legal protections that businesses in non-illicit fields use to stop potentially unfair business practices. Trademark registrations are one important protection, and one that businesses in the retail sector particularly lean on, especially in a product market where the products are fungible. A recent decision by the Trademark Trial and Appeal Board (TTAB) demonstrates that people in the marijuana business will need to be more strategic in how they protect trademarks.

In the case, the TTAB affirmed the United States Patent and Trademark Office’s decision to refuse registration for the mark HERBAL ACCESS for “retail store services featuring herbs” on the grounds that the mark is used in connection with a substance that is illegal under federal law. The TTAB arrived at this conclusion even after the applicant (a Washington state company) argued that the trademark application should be allowed because marijuana is legal to sell in state of Washington.
The Trademarking Decision – Where to File?
The first item on most business owners’ agendas when they start a new business is protection of the house brand, that word, phrase, or symbol that goes on everything from invoices and product packaging to vehicle wraps on the side of delivery trucks. Understandably, the brand name is the first-impression setter for businesses that are involved in distributing products to consumers, differentiating one particular product from dozens of others. Business owners may have put a lot of thought and creativity into the name, which might represent some deeper core meaning for the business and which the business wants to pass on to consumers. But a clever name only goes so far if it is vulnerable to use by a competitor in a different geographical area, a scenario that could actually turn the name into a weapon against the company that created it.

From there, it is a matter of the scope of protection that a business should go after. Usually, this is a fairly simple decision involving a determination of state vs. federal trademark registration, depending on the geographical scope of current business operations and future growth plans. Obtaining a trademark at the state level is quicker, cheaper, and generally easier because trademark applications are not put through the same rigorous examination process that federal applicants must go through. One drawback to the state registration route is that any rights granted under the application are limited to the geographical borders of that state. The practical impact is that a company doing business in multiple states has to register the mark in each state where they are doing business in order to receive the exclusive right to use that mark.

A federal trademark registration promises a more expensive and drawn-out application process, but often carries more robust rights for the trademark owner including exclusivity of use in all 50 states, constructive notice to third parties that the trademark is registered and is a valid trademark, and the ability to sue third parties in federal court and recover higher damages. If a business operates across state lines, or is exclusively an online business, federal registration is a better route for protecting a trademark against third party use because the business only needs one registration to lock-in rights to the name across the entire country.

Federal Trademark Requirements
Because a federal registration grants such a broad swath of rights, applications are subject to meeting stricter requirements. Among such requirements are “lawful” use in interstate commerce regulated under federal law. If a mark is used in connection with an activity that involves a per se violation of federal law, it is unregisterable as a trademark by the federal government.

Given such a restriction, it is perhaps easy to see why a trademark application relating to a cannabis-based business might fail. Marijuana is, of course, a controlled substance under the Controlled Substances Act, which makes it unlawful for a company to sell or trade in the substance. Although the case law background on what exactly is an unlawful use is relatively murky, it appears that examining attorneys in the trademark office who are responsible for reviewing federal applications are more apt to reject an application if it makes any reference to marijuana. As part of the examination process, an attorney at the USPTO typically requests a written response from the trademark applicant as to the legality of the product listed in the goods description.

Federal Law Still Reigns Supreme in Unlawfulness Rejection
The HERBAL ACCESS case demonstrates the dynamic between state and federal law in the analysis of the lawful nature of a substance listed in the description of goods/services in the trademark application. Although the “use in commerce” requirement under the federal Trademark Act clearly references use in commerce that can be regulated by the federal government, any product that would contravene federal law (even if that product is lawful in a particular state) is considered illicit under federal law and, consequently, ineligible for registration.

Seeing, perhaps, that the legal use under state law argument was doomed to fail, applicant contended that some of the services it was offering (namely, sale of herbs) was not illegal and, on that basis alone, the application should be registered. The applicant for HERBAL ACCESS further attempted to argue around the illegal use rejection by saying that the products referred to in the application were merely herbs, not marijuana. The TTAB rejected this argument based primarily on the specimen of use submitted by the applicant itself (which showed a map with wording “Marijuana for the Masses” and a picture of a marijuana plant with the text “Call or stop by today and find out why people consider our marijuana to be the best of the best!”). When looking at this evidence, the board concluded that, clearly, the applicant was selling marijuana. Viewing the presence of marijuana as the equivalent of “poison” in the well of otherwise pure water, the TTAB concluded that one legal item in the description of services did not immunize the entire application from rejection based on unlawfulness of the services.

Trademark Rights for Cannabis Owners
For the time being, it appears that the trademark office will continue to deny applications that include any direct reference to cannabis. While there is always the possibility that the Court of Appeals for the Federal Circuit might re-evaluate their conception of what “use in commerce” means or that Congress will change its stance on cannabis as a controlled substance, business owners in this field would be better-versed in foregoing the federal registration route and sticking with registration in states where the company is doing business. This will give the company the right to exclude third parties from using a similar mark and set the groundwork for bringing claims against third parties in state courts for other injuries such as trademark infringement and unfair competition. A state trademark will not, however, prevent the company from stopping third parties in states where the trademark is not registered, nor will it stop the company from going after third parties that might use a similar name, but on non-competing products (trademark dilution).

To build a broader base for protection of the mark, and if the business provides some other kind of service or product that does not specifically include marijuana as an ingredient or feature, the business might look to a federal registration for a line of business that is not engaging in activities that are unlawful under federal law. Leafly, the self-branded “World’s Cannabis Information Resource”, recently obtained several federal trademark registrations for its LEAFLY mark for various services, including a website for providing information about cannabis strains and effects, and a downloadable app for finding dispensaries. Such a registration (while not specifically for marijuana-based products), could be used to give a business owner a foot in the door to prevent other businesses from using a similar name.

In any event, owners of a cannabis business should carefully consider the risks posed by third parties along with restrictions on trademark registration prior to choosing which strategy to adopt. 

 


Comments

11/03/2017 4:58am

If you've been addicted to marijuana, you probably want to know how to treat marijuana addiction, right? I want to give you a few ways that have been proven in my experience that will definitely help you drop the habit easily.

Reply
11/04/2017 3:17am

this is great post because it appears that the trademark office will continue to deny applications that include any direct reference to cannabis. While there is always the possibility that the Court of Appeals for the Federal Circuit might re-evaluate their conception of what “use in commerce” means or that Congress will change its stance on cannabis as a controlled substance, business owners in this field

Reply
11/30/2017 4:17am

This is a very controversial issue. I feel for the patients who need cannabis oil. But we know that marijuana is still considered as a drug. For now, it may still take awhile for some states to make it legal. The process would be long but the government will come up a decision that would benefit more people.

Reply
11/07/2017 10:13pm

Bandar Bola Terpercaya di Indonesia. Kunjungi situs resmi.

Reply
11/08/2017 11:29am

Sometime it becomes very hard to find a well written and well established bog which give you correct and useful information. However, I found this blog and got some relevant information which are really helpful for me.

Reply
11/08/2017 4:40pm

Luar biasa informasi yang diberikan. Semoga sukses selalu dari agen bola.

Reply

I was just looking for the best dissertation writing services and I saw your post which is really very good. Thank you for sharing this with us.

Reply
11/14/2017 7:13pm

Agen bola terpercaya infokan news terbaru.

Reply
11/15/2017 12:10am

Temukan info terbaik dalam permainan bola sepak online.

Reply
11/21/2017 1:47am

thanks info

Reply
11/24/2017 10:03pm

Temukan informasi terbaru seputar permainan online.

Reply

Thanks for Information Bro, information is really helpful for me.

Reply
11/26/2017 6:53am

This post is really very good. Thank you for sharing this post

Reply
11/27/2017 12:55am

Informasi pendaftaran member hubungi kami.

Reply
11/28/2017 4:38am

Thank you for sharing the post! This is what I need to find.

Reply

cara mengatasi pusing mual keluar keringat dingin

Reply
12/05/2017 10:54pm

cara mengatasi asma sering kambuh saat hamil

Reply
12/05/2017 11:40pm

Mantap info websitenya. Kunjungi agen sbobet.

Reply
12/07/2017 1:24am

agen bola terpercaya di Indonesia siap atasi semuanya.

Reply
12/08/2017 8:10pm

Game casino handal dan terpercaya di Indonesia.

Reply
12/10/2017 6:07pm

Thanks info webnya bos. Salam dari slot games.

Reply
12/13/2017 5:16am

Reply
12/13/2017 4:51pm

In the top match, Prediksi Bola news - Valencia as Barcelona's closest competitor at this time also managed to achieve a hard 2-1 victory at home when entertaining Celta Vigo. Entering Sevilla, Real Madrid appear superior with a great victory at the Santiago Bernabeu Stadium with five goals without reply.

Reply
12/15/2017 10:21pm

thanks you infonya

Reply
12/18/2017 3:59pm

You need to optimize your online store website in the search engine's field to get maximum sales results and avoid your online business from bankruptcy that is not in want

Reply
12/25/2017 8:18am

Interested to include Pari island into your holiday destinations list? Check out more information on fees and accommodation here.

Reply
12/25/2017 8:20am

We give the island information to those who have not visited there, such as tourism events, facilities, how to get there

Reply
12/26/2017 11:15pm

Agen bola solutions terpercaya Indonesia bagus.

Reply
12/27/2017 4:18pm

Luar biasa. mari gabung disini.

Reply
12/27/2017 7:11pm

Permainan bola sepak terjangkau dan relevan.

Reply
12/27/2017 10:17pm

Main seru dalam game terheboh dunia cepat dan handal.

Reply
12/28/2017 4:41am

Customers can request the Therapist's Age at will and will get the best and different service by our therapist. You will be healthy and fit again after getting our service.

Reply
12/28/2017 9:18pm

Agen casino terpercaya asia bagus dunia sukses.

Reply
12/30/2017 1:26pm

For interactive Web, we use animated CSS and Javascript to generate certain effects and functions on a web page.

Reply
01/01/2018 10:18pm

Agen casino terpercaya luar biasa mantap.

Reply
01/02/2018 12:59am

Togel online menjadi permainan menarik.

Reply
01/02/2018 10:30pm

Judi poker online terpercaya mantap keren luar biasa.

Reply
01/03/2018 4:00am

It is highly important in the competitive world of online marketing and website development to use all tactics that can make it trustworthy.

Reply
01/03/2018 4:43pm

Info permainan menarik terpercaya bersama kami.

Reply
01/03/2018 7:39pm

Tim sukses SBOBET Indonesia terpercaya online mantap.

Reply
01/03/2018 11:23pm

Sukses luar biasa bersama situs judi online.

Reply
01/04/2018 11:22pm

Informasi permainan togel hari ini memang top banget.

Reply
01/05/2018 7:17am

Whenever you visit Pakistan in life you must book our Karachi Escorts. Our girls will provide you with better service than us. Our collection of girls are best and skills will make you happy. Our Karachi Call Girls are the best and elite ones which makes you happy.

Reply
01/06/2018 6:26am

Websites that are business oriented or to earn an income, then the ability of SEO should be in the top position.

Reply
01/07/2018 8:14pm

Delhi-Divas amazing Delhi escorts who is always ready for you at your doorstep. Hurry up to avail the most seductive independent escorts in Delhi.

Reply
01/08/2018 12:38am

Luar biasa info togel hk jaman now.

Reply

Front yard landscaping requires extra care in planning and design implementation. Every front yard needs to look special and unique. Your front yard landscape will serve as your basis for the other designs around your residential area.

Reply
01/08/2018 11:31pm

Permainan capsa susun paling keren terbaik saat ini.

Reply
01/09/2018 2:29am

Loved the way you have shared your views thanks alot for sharing will surely bookmarked this wonderful resource!

Reply
01/09/2018 6:27am

We offer several packages of Professional SEO Services that you can customize with your Budget. Next we can maximize SEO On Page by speeding up web loading.

Reply
01/09/2018 3:54pm

Each person must have its own way to maximize SEO, ntah it with a good way or by way of instant and not in accordance with the provisions.

Reply

we provide information on how to treat the disease herbally, may be useful ^_^

Reply

Beauti Queen amazing kolkata escorts agency alwyas ready for you at your doorstep. Beauti Queen provide you high profile independent girl in kolkata, escorts service in kolkata, kolkata escorts. If you are looking for the ultimate encounter in Kolkata then I am your sophisticated young Kolkata escorts that provides upscale companionship for making your night becomes true.

Reply

Our Jakarta SEO services help drive more customers to your website, products, and services than any other online marketing strategy.

Reply
01/10/2018 10:49pm

Luar biasa info agen togel terpercaya.

Reply
01/11/2018 11:09am

You are looking for SEO Services in your city, bring traffick to your website and now we will give and open the opportunity for you.

Reply
01/13/2018 5:29pm

Many technological advances that exist today, many business people are choosing to use internet marketing as a way to market their products and increase their revenue.

Reply
01/14/2018 11:49pm

poker online group terpercaya mantap bagus.

Reply
01/15/2018 4:14am

If you already have a website but your website ranking is still far from page 1 Google Search? Surely it will be difficult for customers to find your website on the internet.

Reply
01/15/2018 5:17pm

One way to create a good website as a means of marketing strategy is to use website creation services and good SEO

Reply
01/16/2018 1:01am

Poker online cam handal dan terpercaya Indonesia.

Reply
01/16/2018 5:07pm

May be, you have difficulty in optimizing your own website, use SEO Services that can help to grow your site up.

Reply
01/16/2018 5:49pm

Poker online bz terpercaya bagus keren sekali.

Reply

permission to share information, thank you

Reply
01/16/2018 11:03pm

Trims info web SBOBET handal dan profesional.

Reply
01/25/2018 2:38am

Hi i am Jenisha Pandey high profile independent collage girl in Gurgaon. we are provide escorts service in gurgaon, gurgaon escorts, escorts in Gurgaon if you are captivating for an independent escorts Call Girls visit www.jenishapandey.com for your naughty desire I am always available 24x7 for your all sexual desire.

Reply

Welcome to Mauritius Plans and thank you for stopping by. We are the leading provider of International Health Insurance in Mauritius, with over 40 years of experience in the area of general insurance as a business.

Reply

rekomendasi bagi Anda yang ingin mengencangkan otot kewanitaan secara alami

Reply
02/02/2018 3:12pm

How to make an energy-efficient home. Here are tips that you can apply to save electrical energy at home.

Reply

keep calm and be happy

Reply
02/03/2018 6:34pm

Juventus are rumored to be ready to immediately find a replacement Italian League player, Stephan Lichtsteiner.

Reply
02/05/2018 4:34pm

By Massage, several studies have proven that doing reflection can improve heart health.

Reply
02/07/2018 7:24am

Reply
02/08/2018 6:47am

A hyge Welcome form Paki Babes one of the best award winning escorts agencies. We are known for serving high-class service in Lahore, Islamabad and many more. Our Pakistani call girls are sexy and beautifull. The Paki Babes are committed themselves protecting privacy of clients. Our agency hire only professional girls for customers.

Reply
02/14/2018 1:35am

Riya Chaudhary is an Independent Delhi Escort girl, who offers dazzling hot Delhi Escorts Service, incall or outcall services both to complete your dreams in real entertainment. We offers high class Independent Escorts in Delhi at Riya Chaudhary Delhi Escorts service agency for elite peoples in the city to avail ultimate satisfaction. you can spend your beautiful moments.

Reply
02/15/2018 4:59pm

are the main highlights of these Russian Escorts and these ranges will forever be

Reply

Loved the way you have shared your views thanks alot for sharing will surely bookmarked this wonderful resource!

Reply



Leave a Reply