{"id":444,"date":"2018-06-06T14:55:48","date_gmt":"2018-06-06T19:55:48","guid":{"rendered":"https:\/\/my.vanderbilt.edu\/marijuanalaw\/?p=444"},"modified":"2018-06-06T14:55:48","modified_gmt":"2018-06-06T19:55:48","slug":"should-the-patent-trademark-office-register-trademarks-for-marijuana-products","status":"publish","type":"post","link":"https:\/\/my.vanderbilt.edu\/marijuanalaw\/2018\/06\/should-the-patent-trademark-office-register-trademarks-for-marijuana-products\/","title":{"rendered":"Should the Patent & Trademark Office Register Trademarks for Marijuana Products?"},"content":{"rendered":"

Two weeks ago, I had the opportunity to debate the question posed by the title of this post with Shabnam Malek, a pioneering trademark attorney with Brand & Branch, LLP<\/a>. The debate was organized by the International Trademarks Association (INTA) for its annual meeting in Seattle, and it was expertly moderated by Dean Megan Carpenter of the University of New Hampshire Law School.<\/p>\n

The debate drew a large (and lively) crowd in Seattle. INTA members who missed\u00a0it should be able to access\u00a0a recording of the debate via the organization\u2019s website (alas, it\u2019s password protected). But for readers who aren\u2019t INTA members, I thought I\u2019d summarize the main points Shabnam and I made during the session. Before doing so, however, let me first provide a little bit of background on the trademarks issue (discussed in the book on pages 406-412).<\/p>\n

Under the status quo, marijuana suppliers cannot register trademarks on marijuana products with the federal Patent and Trademark Office (PTO). This is because the PTO has interpreted one key requirement for registration \u2013 namely, that an applicant show \u201cuse [of the mark] in commerce\u201d\u2014 to mean \u201clawful\u201d use in commerce (see book pages 407-409). Obviously, marijuana suppliers cannot yet satisfy this requirement because the sale of marijuana remains illegal under federal law. Indeed, the PTO has repeatedly rejected trademarks for use on marijuana products (see book pages 407-412).<\/p>\n

Shabnam and I debated whether the PTO should change course and register marks for marijuana products, notwithstanding the federal ban on same. Shabnam argued for registration and I argued against. It bears mentioning, however, that INTA urges the debaters to push starkly contrasting positions on the topic \u2013 in other words, neither Shabnam nor I necessarily agree with the points we made and which I summarize below:<\/p>\n

Shabnam made two main points in support of the PTO registering marks on marijuana products. (Hopefully I\u2019ll do justice to her arguments; I\u2019ve revised them somewhat here for ease of exposition.)<\/p>\n

First, Shabnam argued that registering marks on marijuana products protects consumers \u2013 the key purpose behind\u00a0the Lanham Act (the federal trademark statute). The idea is that without national trademark protection, two (or more) suppliers in two (or more) different states could sell two (or more) very different marijuana products with the\u00a0identical brand name. It\u2019s easy to imagine how consumers could be confused by this state of affairs. Suppose, for example, that a Massachusetts resident likes to buy a brand of local low potency marijuana brownies called \u201cBayBaked.\u201d Now suppose that this consumer travels to California on vacation, where she visits a marijuana shop and sees a \u201cBayBaked\u201d brand of marijuana brownies on the shelves. She might mistakenly believe these are the same brownies she buys back home in Massachusetts — not realizing that the California version contains far more THC than the low potency Massachusetts variety. As a result, she might unwittingly overconsume marijuana on her vacation, potentially putting her health and safety at risk.<\/p>\n

Today, most manufacturers of marijuana products (like the fictional producers of \u201cBayBaked\u201d marijuana brownies) can get state protection for their brands. But such protection extends only to the borders of a state; i.e., it does not prevent suppliers from using the same mark in other states, notwithstanding any possible consumer confusion. This is why national trademark registration is necessary.<\/p>\n

Second, Shabnam argued that the PTO doesn\u2019t have to wait for Congress to legalize marijuana before registering marks on marijuana products. She noted that the Lanham Act itself doesn\u2019t expressly require use in commerce to be \u201clawful\u201d use. Rather (as hinted above), the lawfulness requirement stems from the PTO\u2019s interpretation of the Lanham Act. The PTO is thus free to revise its interpretation and to permit registration of marks on products unlawfully used in commerce.<\/p>\n

Although I largely agree with Shabnam, I argued against PTO registration for marks on marijuana products \u2013 at least while the drug remains illegal under federal law. I gave three arguments for this position.<\/p>\n

First, registration seems unnecessary to protect consumer health and safety. After all, legalization states\u00a0heavily regulate the labeling and packaging of marijuana products. For example, they require manufacturers to print warning symbols and labels on all packages of marijuana products. (Such labeling and packaging requirements are discussed in the book in pages 456-462.) To my mind, these requirements ensure that consumers already get most (if not all) of the health and safety information they need to make wise consumption decisions.<\/p>\n

Second, granting national trademark protection for marijuana products could potentially undermine the states\u2019 ability to regulate the types of marijuana products they allow within their borders. As it stands, I don\u2019t think states need to worry too much about an out-of-state marijuana supplier openly\u00a0advertising<\/em> its products locally. Without national trademark protection, that out-of-state supplier can\u2019t stop local rivals from using its mark for their own benefit \u2013 i.e., from capturing some of the goodwill the advertising campaign generates. But if the PTO were to grant national protection for trademarks on marijuana products, the out-of-state supplier\u2019s incentives change: it would now have an incentive to openly advertise outside of its home state, even in places where its products remain illegal.<\/p>\n

To be sure, registering a trademark alone doesn\u2019t give a company the right to sell its product anywhere in the nation. So, to build on the example above, Massachusetts could still ban the sale of California\u2019s BayBaked brand brownies (say, because those brownies are too potent), even if the California company registered a trademark for BayBaked with the PTO. Realistically, however, states probably can\u2019t prevent products from entering their marks once they have a national trademark. For one thing,\u00a0states probably can\u2019t ban advertising of such products, even if they remain illegal locally; such a ban could potentially\u00a0violate First Amendment protections for commercial speech (see book pages 501-504 and this new article<\/a> from Leslie Jacobs). In addition, although states can legally restrict the sale and possession of trademarked products within their borders, practically speaking, they probably couldn\u2019t stop consumers or black market resellers from smuggling\u00a0a marijuana product into the state. (Indeed, interstate diversion is already a problem, as noted in this earlier post on looping<\/a>\u00a0and in an earlier article I wrote on Marijuana Localism<\/a>.)<\/p>\n

In short, the only way to stop a marijuana supplier from successfully selling its product across state lines may be to\u00a0take away the company\u2019s incentive to advertise outside of its home state.<\/p>\n

Third, I think the lawfulness requirement is\u00a0probably the most reasonable interpretation of the Lanham Act. Indeed, it seems implausible that the Congress that enacted the Lanham Act would have wanted to provide federal trademark protection for illicit products\u2014not just marijuana, of course, but any illicit goods (imagine, for example, someone trying to register Heisenberg\u00ae brand pure crystal meth).<\/p>\n

For all of these reasons, I think the PTO should wait for Congress to repeal the federal ban on marijuana before registering marks on marijuana related products.<\/p>\n

That\u2019s it for now. I\u2019m writing up an article on the lawfulness requirement for trademark registration. If you have comments or thoughts on the topic, I would love to hear from you (robert dot mikos at vanderbilt dot edu).<\/p>\n","protected":false},"excerpt":{"rendered":"

Two weeks ago, I had the opportunity to debate the question posed by the title of this post with Shabnam Malek, a pioneering trademark attorney with Brand & Branch, LLP. The debate was organized by the International Trademarks Association (INTA) for its annual meeting in Seattle, and it was expertly moderated by Dean Megan Carpenter…<\/p>\n","protected":false},"author":6789,"featured_media":0,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1,4],"tags":[6,351,352,353,15,5,350,354,355,96],"class_list":["post-444","post","type-post","status-publish","format-standard","hentry","category-news","category-updates","tag-cannabis","tag-inta","tag-international-trademark-association","tag-lanham-act","tag-marihuana","tag-marijuana","tag-mark","tag-patent-and-trademark-office","tag-pto","tag-trademarks"],"_links":{"self":[{"href":"https:\/\/my.vanderbilt.edu\/marijuanalaw\/wp-json\/wp\/v2\/posts\/444","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/my.vanderbilt.edu\/marijuanalaw\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/my.vanderbilt.edu\/marijuanalaw\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/my.vanderbilt.edu\/marijuanalaw\/wp-json\/wp\/v2\/users\/6789"}],"replies":[{"embeddable":true,"href":"https:\/\/my.vanderbilt.edu\/marijuanalaw\/wp-json\/wp\/v2\/comments?post=444"}],"version-history":[{"count":1,"href":"https:\/\/my.vanderbilt.edu\/marijuanalaw\/wp-json\/wp\/v2\/posts\/444\/revisions"}],"predecessor-version":[{"id":445,"href":"https:\/\/my.vanderbilt.edu\/marijuanalaw\/wp-json\/wp\/v2\/posts\/444\/revisions\/445"}],"wp:attachment":[{"href":"https:\/\/my.vanderbilt.edu\/marijuanalaw\/wp-json\/wp\/v2\/media?parent=444"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/my.vanderbilt.edu\/marijuanalaw\/wp-json\/wp\/v2\/categories?post=444"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/my.vanderbilt.edu\/marijuanalaw\/wp-json\/wp\/v2\/tags?post=444"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}