The US Patent & Trademark Office will not register trademarks for drugs that are regulated under the Controlled Substances Act or for related paraphernalia. 21 U.S.C. §§801-971; TMEP § 907. That does not stop applicants from applying for a wide range of marijuana-related products and services, and many products that are not the drug itself nor paraphernalia are registrable. Direct registration protection for marijuana products is available via state registries. This blog post looks at filing trends in the USPTO’s federal registry.
California legalized medical marijuana in 1996, with several Oregon (1998) and Main (1999) following suit. Six states legalized medical marijuana in the 2000s and nine more did so in the 2010s. Recreational legalization began with Colorado and Washington in 2012 and has since expanded to nine more states.
Marijuana-related trademark filings on the federal level did not exactly match up with state-level legalization trends, possibly because legalization tends to require slow and bureaucratic rulemaking. Federal trademark filings started to accelerate in 2009, and really skyrocketed in 2014.
Most federal trademark filings are focused on a handful of classes. The chart below shows filings where the mark, the mark description, or the description of goods contains certain “single-purpose” marijuana-related terms. For instance, “cannabis” was included as a search term but not “joint,” whose primary use is not marijuana-related.
The key classes were:
- Class 5 for medicines; these will presumably be almost uniformly refused under the Controlled Substances Act;
- Class 25 for clothing; these “merchandising” or “messaging” products are generally accepted by the USPTO;
- Classes 30-34, presumably for edibles; these also face an uphill battle under the CSA;
- Class 35 for retail services, which will face CSA issues, and online review/recommendation services, which should be OK;
- Class 41 for entertainment services, generally OK; and
- Class 44 for medical services, largely on the medical marijuana side of the industry, and which generally face CSA issues.
As state-level legalization efforts continue, it is possible that Congress will amend the Controlled Substances Act to permit limited intellectual property protections for marijuana-related products and services in states where they are legal. Until then, applicants in the marijuana industry will have to seek as much federal trademark protection as they can for ancillary products or for merchandised goods, and rely on a patchwork of common-law rights and state trademark registrations to protect the brand identifies of their core products.