Products of the Mind

Bonus Episode: The Trademark Office on Pot

November 5, 2015

If you live or do business in the United States and you want to protect the brand name of your product or service, the typical approach is to register that brand name as a trademark with the United States Patent and Trademark Office (USPTO). But what if that product isn’t exactly legal?

For a review of the basics of trademark law, I suggest you check out Episode 2 of Products of the Mind: “What Is a Trademark?”

The USPTO has noted that the Controlled Substances Act:

…prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances including marijuana and marijuana-based preparations…The CSA also makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., “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].”

The USPTO takes the position that it can only register trademarks when the underlying goods or services are lawfully used in interstate commerce (interstate = more than one state.) You can take my word for it or look up Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127. So the USPTO’s current policy is that because marijuana is a Schedule 1 drug under the Controlled Substances Act, they are not permitted and will not register any trademarks for pot-related products.

This doesn’t just apply to brand names for pot itself. Because the Controlled Substances Act also includes drug paraphernalia (do you ever hear that word used when it’s not related to drugs?), the USPTO also refuses to accept applications for products like bongs or pipes.

Legalization

But wait – isn’t pot legal in several states now? Of course, several states have enacted various types of laws legalizing or decriminalizing marijuana. Colorado is the most notable example. However, the USPTO is a federal agency, and it’s obligated to follow federal law, not state law. The USPTO has no way of making a policy that applies in Colorado and not Kentucky.

So we have a conflict: you may be doing business in a way that’s perfect legal in one state, but federally illegal, and therefore you’re not able to protect your brand name through the mechanism of a federal trademark registration.

Options for Pot Entrepreneurs

There are a few options available to pot entrepreneurs. And remember: while I’m a lawyer, I’m not necessarily your lawyer, and nothing in this podcast should be taken as legal advice.

OK. One approach would be to try to register the trademark in your state. While most trademarks are registered federally, there are still trademark offices in all 50 states. So you may be able to get protection within that state and hold on until the USPTO’s policy changes.

Another option would be to obtain registration for indirectly related goods or services. Let’s say you manufacture both regular candy and candy that includes pot oil as an ingredient. You could potentially register your brand name for the drug-free candy product and at least enjoy some level of protection.

Finally, remember that trademarks don’t have to be registered to be protected. You can enjoy what’s called “common law” protection simply by using the mark in commerce. So even if you can’t obtain a federal registration at this point, you still may be able to protect your brand name, particularly in a state in which the product is legal.

There’s a lot more to this topic, so if you find it interesting, or if it relates to your business, let me know and I’ll be sure to follow up in future episodes.

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The Credits

As always, the music for this episode was provided by Le Chateau. The track name is “Bury You.” Go buy it on Soundcloud!

This episode and these show notes © 2015 David Lizerbram