The USPTO has consistently refused registration of marks for goods and services related to the medical and recreational marijuana industries. The Trademark Trial and Appeal Board has unanimously affirmed these refusals. The rationale behind these rejections is that the applicants cannot have a bona fide intent to use the marks in commerce, as the distribution and sale of marijuana is illegal under the federal Controlled Substances Act ("CSA"). Even though medical marijuana is now legal in 29 states and the District of Columbia, and selling recreational marijuana is legal in five states, federal law supremacy bars the acquisition of federal trademark rights for most marijuana-related goods and services.
Yet this prohibition has not deterred businesses and individuals in this booming industry from trying to obtain registrations, and they often come prepared with creative arguments.
The TTAB rebuffed the latest argument brought by a medical marijuana provider in its June 16, 2017, precedential opinion in the matter In re PharmaCann LLC. Here, Oak Park, Illinois-based PharmaCann LLC attempted to obtain registrations for PHARMACANN and PHARMACANNIS for "retail store services featuring medical marijuana" and "dispensing of pharmaceuticals featuring medical marijuana." This case was destined for an appeal to the Board, as there was no chance that an Examiner would allow a mark with these services to proceed to publication.
On appeal, PharmaCann advanced two arguments. The first mirrored one already rejected by the Board, namely, that because the Department of Justice (based on the 2013 Cole Memorandum) has not enforced the CSA in regard to medical marijuana, the federal government does not treat medical marijuana as illegal. The Board cited its decision in In re JJ206, LLC, 120 USPQ2d 1568 (TTAB 2016), in which it decided this exact issue, and held that the DOJ's refusal to act does not provide a means to obtain a federal trademark registration.
The second argument was a new one. Congress in its recent Appropriations Acts has prevented the Department of Justice from spending money to stop states from implementing laws that authorize the use, distribution, possession, or cultivation of medical marijuana. PharmaCann argued that because of "Congress' decision not to fund the Department of Justice to enforce the Controlled Substances Act against medical marijuana, it would make no sense and serve no purpose for the Board to take a different position in ruling on Applicant's trademark application for medical marijuana."
The Board rejected this argument. It cited a 2016 Ninth Circuit case, United States v. McIntosh, 833 F.3d 1163, in which the court held that the Appropriations Acts did not make medical marijuana legal under the CSA. Therefore, the Board found that PharmaCann's applied-for services violated the CSA, and therefore were not eligible for federal trademark registrations.
While owners of medical and recreational businesses cannot get federal registrations for their core goods and services, they can still obtain some IP protections, such as federal registrations for ancillary goods (such as apparel other promotional goods), state registrations for marijuana goods and services, and copyright registrations for logos.
The Board's decision in this matter is available at its website: http://ttabvue.uspto.gov/ttabvue/ttabvue-86520135-EXA-31.pdf.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
