Most simply, the United States Patent and Trademark Office (“USPTO”) will not register cannabis-related trademarks because cannabis growing, sale, distribution, and use is still illegal under U.S. federal law. In particular, cannabis is still listed as a banned controlled substance under the Controlled Substances Act (“CSA”). The CSA is a federal statute and, as such, governs the legality of cannabis at the federal level despite the fact that many States have legalized cannabis growing and personal use under their own State laws.

The USPTO is authorized to register trademarks under a federal statute called the Lanham Act. Because both the Lanham Act and the CSA are federal statutes, these statutes apply to federal registration of cannabis-related trademarks. Since cannabis is illegal and banned at the federal level, cannabis-related trademarks cannot be registered at the federal level.

In more detail, the USPTO will not register cannabis-related trademarks because the Lanham Act prohibits registration. This is true because certain legal requirements must be met before a trademark is eligible for federal registration. Among these requirements are that the trademark be used in interstate commerce AND that the use be LEGAL. These are generally referred to as the use-in-commerce and lawful-use requirements.

The use-in-commerce requirement is often easy to establish. In simple terms, the trademark must be affixed to a product or packaging or used with advertising of goods or services that are sold in interstate commerce. That is, the products or services are sold in multiple States with the goods or services crossing State lines. The lawful-use requirement is also often easy to establish. U.S. law allows the manufacture and sale of almost everything. As such, most “uses” will be lawful. Cannabis is one now-famous contrary example. Since cannabis is illegal at the federal level, it is nearly impossible to establish the lawful-use requirement for federal trademark registration.

Cannabis medical-use exceptions

The above-described rules apply to ANY substance that is banned and made illegal under the CSA. However, there is a lawful-use exception where the substance can be used — and IS used — for medical purposes. Morphine, for example, is a controlled substance listed as illegal and banned by the CSA. However, morphine is used extensively in the medical field. As such, many companies manufacture morphine and, importantly, sell it under branded and trademarked names like Duramorph, Infumorph, and Mitigo. See here.

Under this exception, it is possible for cannabis that is for medical use only to satisfy the lawful use requirement for trademark registration under the Lanham Act.

State-level registration

With some nuanced differences, the same two legal requirements are necessary to register trademarks at the State level in the United States. Nearly every State has a statute that corresponds to the Lanham Act, and nearly all have a use-in-commerce and a lawful-use requirement. At the State level, use in commerce means use of the trademark on goods or with services for sales within the State’s borders. In States that have decriminalized personal cannabis growing and use, the lawful use requirement is also met at the State level. Thus, cannabis-related trademarks can be registered at the State level in States where cannabis is not banned and made illegal.

Contact the Trademark Attorneys at Revision Legal

For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.