Marijuana as trademark goods

With an estimated 2100 Medical Marijuana dispensaries in California, and 16 states having laws legalizing medical marijuana it comes as little surprise that owners of medical marijuana clinics and individuals and companies producing marijuana and marijuana paraphernalia want to protect their “brand” in a rapidly expanding, and competitive business.




It is no secret that marijuana is regularly requested by its name and/or brand, such as the famous (or perhaps infamous) Maui Wowie and Acapulco Gold. Particular brands or strains are known for and often requested because of their properties and the particular effects they produce, or their ease of ingestion. Some growers and providers believe that particular strains are better suited to addressing particular medical conditions.



In a growing market, how does a clinic, a producer, or a manufacturer protect its brand? Does the USPTO allow trademarking of marijuana, marijuana clinics, and marijuana paraphernalia? The current answer is no.  The USPTO does not allow trademarks or service marks on marijuana, marijuana providers, clinics, or paraphernalia. In order for the US Patent and Trademark Office to issue a registration for a mark, the goods or services associated with the mark must be sold or transported in commerce that US Congress can regulate. Additionally, that commerce must be lawful commerce.



Marijuana, medical or non-medicinal is still illegal under federal law according to the Controlled Substances Act. The Controlled Substances Act (CSA) prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and marijuana-based preparations. 21 U.S.C. §§812, 841(a)(1), 844(a); see also 21 U.S.C. §802(16) (defining “[marijuana]”). In addition, the CSA makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].” 21 U.S.C. §863.



For a very brief window of time in the USPTO temporarily allowed marijuana marks. In the summer of 2010, the USPTO created a classification for marijuana namely, “Processed plant matter for medicinal purposes, namely medical marijuana”. The unveiling of this class led to a slew of USPTO TM/SM applications (250+) However, the USPTO rethought the matter, pulled the class, and in late September issued letters to the 250+ applicants who had filed marijuana applications stating that their application were rejected due to the illegality of marijuana. A copy of the letter can be accessed here (include link to scanned letter):



Despite the whirlwind last summer and fall and the resulting rethinking of the matter by the USPTO, not all marijuana marks are banned. The USPTO is only refusing registration to applications associated with goods or services that run afoul of the Controlled Substances Act (21 U.S.C. § 801 et. seq.). Marks associated with goods and services not illegal under federal law, such as coffee mugs or t-shirts with marijuana symbols, or organization established to lobby for legalization, are free to register so long as they meet all other requirements for registration.


This line of demarcation between legal and non-legal goods/services is not clear, as a perusal of marijuana/cannabis applications and registrations filed with the USPTO shows. Some applicants use vague terms to describe goods and services, such as “Medicinal herbal extracts for medical purposes; Natural herbal supplements” Ser. No. 85169641 –which was not approved by the USPTO, and “Counseling services in the fields of health, herbalism and lifestyle wellness” Reg. No. 3933069 which was approved. Registration decisions hinges on how the goods or services are described, and often how the application responds when questioned further by the examining attorney about the goods and services.. Reg. No. 3933069 was approved because the services did not include the actual provision of medical marijuana, but only the recommendation of medical marijuana as one possible treatment modality in conjunction with a primary care physician OK.



What about State trademark registrations? California’s marijuana laws are more lenient than federal law and also more complex. A detailed overview of California drug enforcement law is beyond the scope or necessity of this article. For purposes of this article, it will suffice that medical marijuana is legal in California. Because medical marijuana is legal in California, commerce in medical marijuana is legal; therefore, use of a trademark on medical marijuana goods and services does not violate California law and California regulates such goods and activities. The California Secretary of State allows registration of medical marijuana trademark and services mark; though, for reasons that are not clear, not many applicants have sough trademark protection from the Secretary of State.



It seems that a state trademark would be a good starting ground, or holding ground for those wishing to protect their brand(s) and or services, while waiting, perhaps forever, for the federal government to change its mind.

by Jennifer DeArmond