Lawful use in commerce is a requirement for a trademark to be registered in the United States. For cannabis brands, this means that the United States Patent and Trademark Office (USPTO) will not register trademarks used in connection with products that are illegal under federal law, most notably marijuana. However, USPTO’s problematic approach to lawful use when it comes to cannabis goods and services is leading to the denial of applications that describe perfectly legal products.
Arguably, USPTO should not be denying any trademark applications on the basis of noncompliance with any laws other than the Trademark Act (also known as the Lanham Act), which governs trademark registration at the federal level in the United States. Nonetheless, there is a certain logic behind the agency’s refusal to register trademarks that describe marijuana, which is a schedule I controlled substance. In general terms, a court will not enforce a contract that requires a party to commit a crime in its jurisdiction. To do so would make the court an enabler of illegal activity. By the same token, facilitating commerce in marijuana, by providing a party engaged in such commerce a particular legal protection, seems at odds with the Controlled Substances Act’s prohibition on marijuana.
Things get somewhat murky when we turn to USPTO’s refusal to register trademarks that describe certain hemp CBD products. While there are some black-and-white prohibitions under the Federal Food, Drug, and Cosmetic Act (FDCA), there is also a lot of gray. For instance, it may not be clear if a product is a “drug” under the FDCA. In fact, the same product could be subject to different treatment by the Food and Drug Administration (FDA) depending on how it is marketed. There may be a genuine question as to whether a product is lawful or not. These regulatory ambiguities are part of the landscape that cannabis brands must navigate and brands may need to pull off delicate balancing acts. Under those circumstances, it is improper for USPTO to create legal facts on the ground through its decisions on trademark applications, particularly given its lack of expertise on public health matters.
Where things get very troubling is when it comes to products whose legality no one questions, such as lighters and rolling papers, but which USPTO will scrutinize when cannabis brands apply for trademark registration. It is a fool’s errand to attempt to classify these items on the basis of their use, not least because multiple uses are a very real possibility. A lighter can be used by a consumer to light tobacco cigarettes, joints, candles, and ex lovers’ letters. Yet USPTO nonetheless insists on requiring trademark applicants to make such distinctions, by adding restrictive terms (such as “cigarette” to “rolling papers”) or issuing broad disclaimers that the goods in question will not be use with naughty products.
This is problematic on many levels, not least of which is the discriminatory treatment being meted out to cannabis brands. For just one illustration, the International Air Traffic Association acknowledges that airlines are used by human traffickers to advance their criminal objectives. Why then is USPTO not requiring that disclaimers be added to service descriptions such as “airline transportation services”, making it clear that trademark protection will not extend to such services when they are rendered to human traffickers and their victims? Because that would be silly, not least because adding such a disclaimer will not move the needle one bit when it comes to the urgent task of combatting human trafficking.
Leaving aside the grave issue of discriminatory treatment against cannabis businesses, USPTO is undermining its own function as administrator of the trademark registers by requiring these pointless disclaimers and restrictions. After all, goods and services descriptions should be, above all, accurate. It may make USPTO feel its doing its part in the war on drugs by requiring a brand that offers grinders to describe them as “tobacco grinders”. The thing is, though, most likely the products are not “tobacco grinders”. They are probably grinders that can be used to grind tobacco, hemp, legal smoking herbs, and, yes, marijuana.
It is one thing to refuse trademark protection in connection with illegal goods. However, is a very different, and rather absurd, thing to refuse trademark registration to products that may be used for illicit purposes. After all, pretty much any good or service that can described ion a trademark application can be used for illicit purposes. Sunglasses? A thief can use them to conceal his or her identity. Lawn care? Great front for money laundering.
Moreover, these restrictive descriptions may hinder a brand’s ability to extend its protective scope to perfectly legal products. By making brands describe a product as “tobacco” this or that, they are forced to exclude other possible, legal uses. As discussed before, it is not just a grinder that can be used with tobacco; it can also be used with hemp and other legal smokable products. Well, USPTO might counter, then you can just list out “hemp grinders” and “legal smoking herb grinders”. Yet a better approach is to just let brands describe their products as “grinders”, and if someone uses one of those grinders to grind marijuana, so be it.
As we have said many times before, USPTO has no problem with the idea that a product in connection to which a registered trademark is used may in some instances be used for illicit purposes. It seems that the only time there is a problem is when it is a cannabis brand that applies for trademark registration. Cannabis brands, by the way, that may not be selling anything considered a controlled substance under federal law. And even when the trademark registration that is being applied for is in connection to innocuous products such as lighters.
Ultimately, one cannot help but conclude that the discriminatory treatment being meted out to cannabis brands by USPTO amounts to a crusade against an entire industry. Presumably, the cannabis industry is so pernicious that it cannot even be allowed to earn money by selling lighters and rolling paper. We call on USPTO to end this abuse of the lawful use requirement.
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