Upcoming Presentation: "Protecting Your Client's Marijuana Trademark"
I’ve got some clients who are interested in protecting their (legal) marijuana trademarks: both medical and recreational.
Since they’re interested, I’m interested.
And, besides, I think it’s just plain interesting. Illegal on the federal level. Legal in some states for medical uses. Legal in Washington and Colorado for recreational uses. Illegal at airports. Illegal across state lines. It’s a legal mess, all right. But we’ll help sort it out this week at the King County Bar Association Intellectual Property Law Section’s monthly brown bag lunch. March 6, noon to 1. Members can attend live or stream on their computer. Information on the IP Law Section here.
The nickel version of my thoughts: marijuana trademarks are like all other trademarks, except for the “lawful use” requirement at the federal level. In short, you can’t register marks for marijuana-oriented goods or services with the U.S. Patent and Trademark Office, because those uses aren’t legal. So you should register “clean” versions of your client’s goods and services at the federal level, and the marijuana uses where legal at the state level. Just don’t get too cute with the PTO (like “MARYJANE HEMP FOODS” for food supplements) or the PTO will require you to answer some pretty direct questions about whether your client’s goods contain marijuana.
My slides are viewable here.
Bring your questions, best practices, and best guess at what the law will look like in five years.
Michael Atkins
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For example: http://tinyurl.com/USPTO-No-MJ-in-ID
"Medicinal herbs" in Class 5, and
"Herbs for smoking" in Class 34.
Class 35 retail services could be identified as:
"Retail store services in the field of herbs and medicinal herbs"
The only issue is applicability of the CSA. Arguably, the "use in commerce" requirement can be satisfied without the "herbs" ever being transported interstate given that the commerce clause is so broadly interpreted and an out of state tourist could come to WA or CO to consume marijuana (just like an out of state restaurant patron).
Does this violate the CSA?
Is it a "use in commerce"?
An analogous example would be if I, a NY resident, went to California and purchased a wine only available for sale at a local CA winery. If this hypo satisfies use in commerce (and that's assuming there are no shipments of wine across state lines) then why would marijuana distribution/consumption wholly within WA and CO be different?
The only difference really is the USPTO's using the CSA as a means to reject granting federal trademark rights ... but I wonder if that's what the CSA was designed to address and whether State sanctioned marijuana distribution and use doesn't fall into an exception or whether one should be created. It would be interesting to see, as you point out, how the TTAB would handle a challenge based on priority of use in WA or CO.