Now that the feds say they’re not going to challenge Washington’s statute legalizing recreational use of marijuana, does that mean you can get a federal registration for your marijuana-related trademark?
Nope. I would expect the U.S. Patent and Trademark Office to continue to deny applications for federal registration of any drug-related trademark that the feds deem to be illegal.
So where does that leave legitimate business owners here who want to maximize protection of their marijuana-related trademarks? There are two broad strategies to consider. First, you should consider getting a state trademark registration. The State of Washington accepts applications for state registration even if they explicitly refer to goods or services involving marijuana, cannabis, and the like. A state registration expands the owner’s trademark rights from the geographic area in which it uses the mark (say, Seattle) to having rights statewide. A registration, therefore, would entitle a trademark owner that sells only in Seattle to complain about a confusingly similar trademark even if the competing trademark is only used in Spokane. Because Washington is one of the few places where providing both medical and recreational marijuana goods and services is legal, it makes sense to focus your trademark protection efforts here.
However, if you really want to expand your rights nationwide, there’s another option. You could consider whether you could register your mark at the federal level in connection with goods or services the PTO would consider legal. If you sell both marijuana-enhanced and ordinary, non-enhanced baked goods, for example, you could legitimately apply to register your trademark in connection with (ordinary, non-enhanced) baked goods. A federal registration would help protect you against other sellers of baked goods who adopt trademarks that are too close to yours anywhere in the United States.
It takes a little strategizing, but there is no reason why those in the legal marijuana industry cannot maximize their trademark rights like other legitimate sellers.