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

New Top Level Domains Available

On June 20, 2011, ICANN (otherwise know as the Internet Corporation for Assigned Names and Numbers) gave the much anticipated green light for the expansion of the gTLD space (generic top level domains - the letters to “the right of the dot” in a web address). The program has been in the works for years as ICANN has sought input, recommendations, and approval from numerous individuals and groups. While not everyone agrees that this expansion of the internet is a good or necessary idea, and the debates continue on even as the project has passed, it seems most everyone believed, good or bad, that this day would eventually come.


Currently there are 22 gTLDs including, .aero (air-transport industry), .asia (Asia-Pacific region), .biz (business), .cat (Catalan), .com (commercial), .coop (not chickens, but co-ops), .edu (education), .gov (government), .info (information), .int (international organizations), .jobs (used by companies to advertise jobs), .mil (US Military), .mobi (mobile devices), .museum (museums), .net (network), .org (organizations) and several more. There are also roughly 250 registered country codes, including .ca (Canada), .uk (United Kingdom), .hk (Hong Kong). Under the new rules, .almost-anything-everything will be possible.

The new gTLDs will allow for public and private entities to obtain branded, geographic, and generic domains such as, .megabrand, .automobile, and .san francisco. Also available will be gTLDs in non-latin scripts. Individuals, sole proprietorships, and as yet unformed legal entities will not have a chance to apply. Additionally, there is no allowance for reserving a gTLD or placing one on hold, as can be done with second level domain names. ICANN is requiring that any new gTLD be operational.

The price is enough keep all but big business and or government organizations from applying. The estimated cost is $185,000 just to apply. There may be some additional processing fees involved on top of the $185,000. There will also be an annual fee of around $25,000. But, it is not only the fee that will keep all but the big players out of the game; the application process itself is not as simple as filing out an online form and submitting your credit card. The application process includes checks on the applicant’s ability to actually run and manage a TLD, including the ability to manage and register second level registrations (those to “the left of the dot”), as well as an assessment of the gTLDs impact to the Internet, including any security issues. Lastly, the gTLD will go through a thorough conflict check, including a check against existing TLDs. On top of this there will be a procedure for opposing applications, if, for example, a corporation believes that the gTLD will infringe its trademark.

Applications are being accepted for the first round of new TLDs between January 12, 2012 and April 12, 2012. There will be additional application rounds in the future. ICANN is estimating that it will take anywhere from 8 months to 18 months to approve an application.  This means that new top level domains should be coming our way sometime in 2013.

--by Jennifer DeArmond
Schneck & Schneck

NEWPORT NEWS HOLDINGS CORP. v. VIRTUAL CITY VISION, INC., d/b/a VCV Inc. and VAN JAMES BOND TRAN, No. 09-1947, CA4, 2011

This is a somewhat rare cybersquatting case brought under the Anticybersquatting Consumer Protection Act (ACPA). It is a case involving a domain name “newportnews.com” that started out in 1997 referring to city events and advertising about the city of Newport News.  Plaintiff, a trademark owner for Newport News for women’s fashions, brought in 2000 and lost an ICANN arbitration wherein the arbitration panel found no likelihood of confusion between the domain name and plaintiff’s identical trademark because consumers, seeing city events would not be confused as to plaintiff’s women’s fashions.   About the year 2007, defendant changed management of its website from a company that handled city events to personal management by defendant and then emphasized women’s fashions.  The District Court (ED Va.) granted summary judgment on the ACPA claim, awarding statutory damages plus attorney fees and sanctions against counsel. 

To establish an ACPA violation, plaintiff was required to "(1) prove that defendant had a bad faith intent to profit from using the [newportnews.com] domain name, and (2) that the domain name is identical or confusingly similar to, or dilutive of, the distinctive and famous Mark".  Calling the mark “famous” seems like a bit of a stretch to this writer and may indicate a predisposition by the appellate court on the strength of the mark when no trial had yet been held (this is an appeal of summary judgment on the ACPA claim).

The appeals court found both bad faith, from the commercial intent of the website relating to women’s fashions and confusing similarity.  Defendant argued that the ACPA permits a registered trademark to be used by someone other than the mark owner if it is a "use, otherwise than as a mark, . . . of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin." 15 U.S.C. ß 1115(b)(4). The district court found that this provision did not apply here because "[o]n VCV's website, Newport News is no longer used to describe VCV's goods or services, or their geographic origin, because the site is dedicated primarily to women's fashion."

    The change in the character of the website in 2007 was seen as wilfull conduct, justifying high side statutory damages, while some tactical errors caused attorney fees.

MOBILE ANESTHESIOLOGISTS CHICAGO v. ANESTHESIA ASSOCIATES OF HOUSTON METROPLEX, CA7, 2010

Trademark infringement Houston-based defendant who was sued in Illinois was dismissed because of lack of personal jurisdiction in Illinois.  District court relied upon tradition “minimum contacts” theory of personal jurisdiction to find that defendant did not have sufficient contacts with Illinois.  Federal trademark registration under 15 U.S.C. 1072 does not create automatic jurisdiction nor nationwide service of process.  Internet website emphasizing Houston service was an insufficient contact with Illinois to create minimum contacts.  Actions taken by defendant to prevent preliminary injunction did not act as a waiver of jurisdiction or venue challenge.  The district court found that defendant did not directly aim potentially infringing conduct towards Illinois.  Seventh Circuit affirmed.  Note that the Seventh Circuit applied its own tests for personal jurisdiction.  This seems to clash with a recent Federal Circuit opinion in Nuance Communications v. Abbyy Software House (Fed. Cir. 2010) that indicates that Federal Circuit tests should be used, but for all practical purposes the tests are very similar.

TENNECO AUTOMOTIVE OPERATING CO. v. KINGDOM AUTO PARTS et al., (CA6, 2010)

     In a “not for publication” opinion, the Sixth Circuit appeals court reviewed and affirmed a district court decision in which the lower court granted summary judgment that no trademark protection was available for numbers on automotive struts that primarily serve to identify the strut.  The appeals court agreed that such numbers are descriptive of the product and do not serve a trademark function, identification of source, because there was no evidence of secondary meaning.  Plaintiff Tenneco had applied for federal trademark registration and such registration was refused.  It is interesting that the appeals court stated that the USPTO’s refusal to grant registration upon a finding of lack of secondary meaning was strong evidence on the point.  The USPTO has limited fact finding capability and must rely on declarations.  That is what the district court did in reaching the same finding, which was affirmed.   One of the problems faced by plaintiff was that  several declarations were given little or no weight because they were not properly prepared.

     The principal cases cited by the court relating to the existence of secondary meaning were Ferrari S.P.A. Esercizio Fabriche Auto. E Corse v. Roberts, 944 F.2d 1235, 1239 (6th Cir. 1991) and Herman Miller, Inc. v. Palazzetti Imports & Exports, Inc., 270 F.3d 298, 311-12 (6th Cir. 2001 where the court noted that when direct evidence of secondary meaning evidence is unavailable, inferences are drawn from  the following factors: "1. direct consumer testimony; 2. consumer surveys; 3. exclusivity, length, and manner of use; 4. amount and manner of advertising; 5. amount of sales and number of customers; 6. established place in the market; and 7. proof of intentional copying.  The court went through these factors in finding a lack of secondary meaning.

     In a 2-1 decision, the dissenting justice thought that the strut numbers could have secondary meaning based upon the declarations and therefore a question of fact for a jury existed.

     The grant of summary judgment in trademark cases is somewhat rare, yet summary judgment saves court time and the time of jurors.   Perhaps the administrative determination of non-registrability was the most powerful factor influencing the court in this case that a source-identifying trademark did not exist.

UNIVERSAL FURNITURE v. COLLEZIONE EUROPA USA, CA4, 2010

While furniture designs might be protectible under trademark law using a trade dress theory (Taco Cabana 1992 Supreme Court case) or perhaps as protected design where secondary meaning can be shown (Samara Bros. v. Wal-Mart, 2000 Supreme Court and 4th Circuit Ashley Furniture case), this cases discusses a false designation of origin theory of infringement.   But more interestingly, copyright protection in furniture was found, a bit surprising.  Copyright law protects "original works of authorship".  Most authorship is 2-dimensional, i.e. written or drawn works, but copyright extends to certain visual works of art that are 3-dimensional.  Copyright does not protect useful articles of manufacture.  These are covered with design patents.  Most furniture is primarily useful.  However, art can exist in furniture designs (as it does in sculpture) and, according to this case, is copyrightable if originality exists.  However, the artistic aspects must be "conceptually separable" from utilitarian aspects, relying on the 1954 Supreme Court case of Mazer v. Stein.  The court looked for compilations of decorative elements to support copyright and found them in various shells, leaves, columns, finials, rosettes and other carvings in the furniture, describing these features as aesthetic decorative elements, not intertwined with the function of the furniture and capable of existing independently.  The court then found infringement because substantial similarity existed in the works.  The court also found false designation of origin under trademark law by finding that consumers were misled.  The case originated in North Carolina, a furniture manufacturing state, having a Uniform Deceptive Trade Practices Act.  The court found violations of this state law.
    For manufacturers of furniture having decorative ornamentation, the case shows that attempting copyright registrations for furniture is a worthwhile effort.  The cost of registration is low and a federal action for copyright infringement may not be brought without a registration.

Georgia-Pacific Consumer Prods. LP v. Myers Supply, Inc, CA8, Sept. 2010

GP, an industry leader in paper products, distributes paper towel holders and paper towels to commercial enterprises, as does defendant Myers.  Myers placed non-GP paper towels in GP towel holders that were leased to parties against terms and conditions in contracts requiring use of GP paper.   GP claims trademark infringement and tortious interference with business relations for the contract issue.
      In considering trademark infringement from both the standpoint of end user paper towel purchasers (who were not confused) and bathroom towel users (who generally did not care what was in the dispensers), the court went through the classic infringement test involving factors, including market factors.  The testimony from competing survey experts was discounted in favor of testimony by industry insiders who said that stuffing towel holders of one brand with paper products of a different brand was common industry practice that did not cause confusion.  A claim for tortious interference with a business relation (contract between GP and its customer) was dismissed.  Defendant wins.
     Thus, the general rule of substituting a competitor product for a trademarked product in consumer distribution as being trademark infringement was not sustained.    Once again, survey evidence was discounted after a battle of experts.   Both sides spent a lot of time, money and effort in a case that should have been settled.