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The PTO has Overstepped its Statutory Authority in Refusing to Register Trademarks for Marijuana

Posted by on Wednesday, June 23, 2021 in News, Updates.

The title of this post is the key takeaway of a new article I have recently posted on SSRN:

Robert A. Mikos, Unauthorized and Unwise: The Lawful Use Requirement in Trademark Law, 75 Vand. L. Rev. __ (forthcoming January 2022).

Here is the abstract:

For decades, the United States Patent and Trademark Office (PTO) has required trademark owners to comply with sundry non-trademark laws governing the sale of their trademarked goods and services. Pursuant to this “lawful use requirement”, the agency has refused or even cancelled registration of thousands of marks used on everything from Schedule I controlled substances to mislabeled soap. This Article subjects the agency’s lawful use requirement to long-overdue scrutiny. It suggests that in requiring compliance with other laws for registration, the PTO has lost sight of the one statute it is supposed to administer. In the process, the agency has overstepped the limits of its statutory authority and undermined federal trademark policy. Whether a mark owner has used its mark to sell improperly labeled soap or an illicit drug, the PTO has no mandate, and no convincing policy reason, to deny the owner the substantial benefits of registration. Simply put, the agency’s lawful use requirement has no place in trademark law.

The article should be of interest to marijuana businesses, which have been denied (unlawfully, it turns out) federal trademark protections. I am hoping the piece might help convince the PTO to abandon the lawful use requirement, or, in the alternative, that it might help convince a court to order the PTO to abandon the requirement.

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