The mere connection to marijuana causes trademark applications to be denied---the USPTO will follow Congress’s mandate to the tooth and nail. Only legalization solves.

A trademark is "any word, name, symbol, or device, or any combination thereof" that is used "to identify and distinguish" an individual's or a business's product or service from those sold or provided by others, and "to indicate the source of the goods ... ." 84 [*485] Congress, acting pursuant to its Commerce Clause powers, 85 has granted the USPTO the authority to register federal trademarks through the Lanham Act. 86In order to receive federal trademark protection, one must make use of the trademark in U.S. commerce, 87but with one daunting caveat: "Commerce," for purposes of the Lanham Act, "means all commerce which may lawfully be regulated by Congress." 88Hence, before the USPTO will issue a registration for a trademark, an applicant must show that the current or intended use of the trademark in commerce is or will be lawful. 89

[Footnote 89 Begins]

See Karin D. Jones & James M. Shore, Marijuana Regulation § 11.03(1) (2018); see alsoKamin & Moffat, supra note 12, at 243-44; see also Danielle Grant-Keane, The Unattainable High of the Marijuana Industry, Wis. Law., Apr. 2017, at 14, 18 (explaining that applications "with even the slightest connection to marijuana would likely trigger a red flag for potential unlawful activity").

[Footnote 89 Ends]

Because marijuana is still illegal under federal law, trademarks for goods and services directly related to the drug are barred from receiving federal registration because their use in commerce would be considered unlawful, even in states where marijuana is legal. 90

The view that marijuana's federal illegality bars it from federal trademark protection is outlined in the Trademark Manual of Examining Procedure, which states that "evidence indicating that the identified goods or services involve the sale or transportation of a controlled substance or drug paraphernalia in violation of the Controlled Substances Act ... would be a basis for issuing an inquiry or refusal." 91This provision applies even in states where marijuana is legal because, "regardless of state law, marijuana, marijuana extracts, and the psychoactive component THC remain Schedule I controlled substances under federal law and are subject to the CSA's prohibitions," and they "apply with equal force to the distribution and dispensing of medical marijuana." 92

The Trademark Trial and Appeal Board (TTAB), the entity that handles appeals of USPTO trademark denials, 93 has a long-standing practice of affirming denials based on a trademark's illegal use or intended use in commerce. 94

[Footnote 94 Begins]

See, e.g., In re Stellar Int'l, Inc., 159 U.S.P.Q. (BNA) 48, 51 (T.T.A.B. 1968) ("The term "commerce' whenever and wherever used in the trademark statute must necessarily refer to "lawful commerce' ... ."); see alsoGray v. Daffy Dan's Bargaintown, 823 F.2d 522 (Fed. Cir. 1987). For a more detailed history of the unlawful use doctrine's evolution, see Christopher R. McElwain, High Stakes: Marijuana Brands and the USPTO's "[Lawful] Use" Registration Criterion (Apr. 15, 2016) (unpublished manuscript) (on file with the INTA Bulletin), http://www.inta.org/Academics/ Documents/2016/McElwain.pdf [https://perma.cc/8TNX-YFTS].

[Footnote 94 Ends]

Many recent TTAB decisions have affirmed [*486] denials of trademark protection for marijuana-related goods and services due to their prohibition under the CSA. 95 The takeaway from this treatment of marijuana-related trademark applications is that so long as marijuana is illegal under federal law, similar applications will continue to be denied. 96 Additionally, if an individual is forthcoming and states in their trademark application that the trademark is associated with marijuana, they risk opening themselves up to federal criminal prosecution for admitting this under oath. 97 While there are some methods for obtaining limited trademark protection outside of federal registration, these strategies are likely not ideal for those seeking to protect their medical marijuana fully and directly. 98