Q&A with Rachel Blue: No federal trademark protection for marijuana
No federal trademark protection for marijuana brands
Q: Is it true that even though Oklahoma has legalized medical marijuana, prospective business owners in the industry can't get federal trademarks for their brands?
A: It is true. Oklahoma's marijuana industry is starting to take shape, which means there soon will be no shortage of cannabis-inspired brand names and logos for marijuana-related goods and services. "Ganjapreneurs" won't be able to federally register clever, distinctive and marketable as names like Herband Legend dispensary and Grass Roots bud farm.
Q: Why won't the U.S. Patent and Trademark Office issue trademarks for marijuana?
A: Trademark rights arise primarily from use in commerce as a way to ensure fair competition. The U.S. Patent and Trademark Office requires that the goods and services in any application for a trademark registration be in lawful use in commerce that Congress can regulate. And therein lies the rub. Though many states have legalized marijuana, the federal government still views it as illegal, so it cannot be transported across state lines or national borders ... which means it's not in interstate or international commerce, the only commerce that Congress can regulate. So in effect, the USPTO (U.S. Patent and Trademark Office) cannot grant trademarks for marijuana as long as the federal government maintains the Controlled Substances Act.
Q: What's the downside to not owning a federal trademark?
A: While unregistered trademarks have some protection under state or common law, obtaining a federal registration from the U.S. Patent and Trademark Office entitles the owner to additional benefits, such as the presumption that the registrant is the owner of the mark and is the only one entitled to use it. In addition to having national priority, the trademark owner also has the right to use the federal registration symbol and sue alleged infringers in federal court for money damages. Without the protections and benefits afforded by a federal trademark, infringement can't be nipped in the bud.
Q: Aside from relying on common-law rights provided under state law, do marijuana businesses have any other options for protecting their intellectual property rights?
A: Some cannabis capitalists have adopted the strategy of registering their marks for ancillary goods that might be sold along with the marijuana, like vaporizers, pipes and ashtrays, or might be used in plant growing or distillation, like grow lights and tents or infusion systems. Others have considered filing copyrights on designs or artwork encompassing the name, relying on the copyright owner's exclusive right to reproduce an image. Strategies like co-branding with legal products such as THC-laced beverages or food items may offer some protection, but for now, the USPTO still just says no to trademarks for marijuana.
PAULA BURKES, BUSINESS WRITER