The plan presents the USPTO with overwhelming uncertainty of how to administer marijuana trademarks.

What will happen with cannabis trademarks after federal legalization? This question comes up regularly, but unfortunately lacks a clear answer (or even an unclear answer). On the one hand, with cannabis no longer unlawful at the federal level, USPTO will be able to register trademarks for cannabis products. But beyond that, nothing is clear.

Whose use is it anyway?

The cornerstone of trademark law in the United States is use in commerce. A trademark cannot be registered if it is not used in commerce. In case of a dispute between two parties using the same mark, the prior user will win out, even if the later user registered the mark first.

However, use in commerce must be legal. This means that use of trademarks in connection with cannabis products does not constitute use in commerce for federal trademark registration purposes at this moment in time. But on the day federal legalization takes effect, such use will constitute use in commerce under federal trademark law.

As you can see, Legalization Day will be the first date of use in commerce for a lot of cannabis trademarks. For most brands, this will not be a problem: In fact, having Legalization Day on their trademark certificates seems like a pretty cool thing.

But what happens if a trademark is being used by two different brands? Can the brand that first used the mark claim a prior right?

Use in commerce before federal legalization may not count

The honest answer to this last question is, frustratingly, we do not know. However, a very relevant precedent suggests that prior users may not have a stronger claim. When examining applications for hemp trademarks, USPTO draws a distinction between use in commerce before the enactment of the 2018 Farm Bill and use in commerce after the bill became law. The fact that hemp is now legal does not “legalize” hemp-related activities pre-Farm Bill.

If the same logic is applied, the clock for use in commerce will start ticking at the moment federal legalization begins-–and not a second earlier. This could well lead to situations where the date of first use is exactly the same for identical or similar marks.

It is possible that USPTO will anticipate these issues and formulate guidance. Yet, given the nature of the problem, it may not be possible for USPTO to come up with a comprehensive solution. Looking at which applicant used the mark first (even if it was not legal to do so at the time) would offer a practical approach, but has downsides from a public policy standpoint: If activity that was illegal at the time confers benefits on those who carried it out, it may incentivize ongoing and future illegality.