RSS Marijuana Investing News
  • Marijuana News Is Moving December 19, 2018
    News content on Marijuana.com is being reborn as Weedmaps News at news.weedmaps.com. While our URL has changed, you can still find breaking news, political coverage, science explainers, and deep dives into the culture of cannabis. The Marijuana.com archives remain available, with the exception of recent selections that have transferred to Weedmaps News. While Marijuana.com won’t […]
    Nicolas Juarez
  • Rights Groups, Unions Call for Ending Marijuana Prohibition December 14, 2018
    A coalition of major civil rights organizations, labor unions and other groups is calling on Congress to completely remove marijuana from the Controlled Substances Act and divert revenue to communities that have been harmed by the enforcement of cannabis prohibition.   “Pass legislation de-scheduling marijuana with racial equity and justice reform components,” reads one recommendation […]
    Marijuana Moment
  • How Trump Government Shutdown Threat Could Affect Marijuana December 13, 2018
    President Donald Trump is threatening to shut down the government if Democrats refuse billions of dollars in funding for a border wall — but the consequences of that action would extend far beyond border security. WASHINGTON (AP) — Trump threatens gov't shutdown in heated meeting with Dem leaders over border wall, squabbling over election results. […]
    Marijuana Moment
  • Elon Musk Confesses: ‘I Have No Idea How To Smoke Pot’ December 12, 2018
    Elon Musk got himself into a bit of trouble after smoking marijuana during an appearance on Joe Rogan’s podcast in September 2018. The move reportedly led to NASA launching an investigation into his company SpaceX’s “workplace safety” and “adherence to a drug-free environment.” But now, in a new interview 60 Minutes, the Tesla founder indicated […]
    Marijuana Moment
  • Cannabis May Qualify for Study Grants as ‘Natural Product’ December 11, 2018
    Federally funded research into marijuana seems to be escalating, with one government agency recently posting a roundup of current “cannabinoid-related funding opportunities” for studies investigating the plant’s therapeutic potential. The National Center for Complementary and Integrative Health (NCCIH) on Dec. 8, 2018, shared a list of four research grant opportunities for studies on “natural products” […]
    Marijuana Moment
  • Surgeon General: Schedule I Hinders Researching Marijuana December 7, 2018
    U.S. Surgeon General Jerome Adams said the federal government should rethink how it classifies drugs like marijuana Dec. 6, 2018, voicing concern that the plant’s current status as a strictly controlled Schedule I substance inhibits research. Adams, who’s previously expressed interest in expanding research into the use of cannabinoids for therapeutic purposes, made the comment […]
    Marijuana Moment
  • Colorado County Considers Canceling Cannabis Convictions December 6, 2018
    BOULDER, Colo. (AP) — Prosecutors in a Colorado county are preparing to dismiss and seal thousands of marijuana possession convictions after state voters legalized the use and sale of cannabis in 2012. The Boulder Daily Camera reported that the Boulder County District Attorney’s Office as part of a “Moving on from Marijuana” program has identified […]
    Associated Press
  • GOP House Leader Calling for Legal Marijuana in Rhode Island December 5, 2018
    The Republican leader in Rhode Island’s House of Representatives thinks the state should fully legalize marijuana. But while that news would typically bode well for reform efforts in state legislatures, the problem is that the Democratic speaker isn’t quite on board — and the House is dominantly controlled by Democrats. In an interview with Rhode […]
    Marijuana Moment
  • ‘Compromise’ Medical Marijuana Bill is Made Into Law in Utah December 4, 2018
    Utah lawmakers approved a controversial medical marijuana bill in a special session Dec. 3, 2018. There’s your final vote on the medical marijuana “compromise.” #utpol pic.twitter.com/w9Ip3KQE8E — Robert Gehrke (@RobertGehrke) December 3, 2018 During the Nov. 6, 2018, election, Utah voters passed a separate medical cannabis initiative, Proposition 2, that would allow patients with certain […]
    Marijuana Moment
  • Study: Vaporizing Flower Produces A More Intense High Than Traditional Smoking Methods December 4, 2018
    Vaping marijuana flower gets you higher than smoking it, according to a new study published in an American Medical Association journal. To test the difference, researchers started by recruiting 17 people who’d consumed cannabis in the past year but had abstained for at least one month. Each individual participated in six sessions that lasted 8 1/2 […]
    Marijuana Moment
mentor36 July 19, 2018

Federal trademark registrations are invaluable tools for emerging businesses. They put the world on notice of a company’s name; they can secure nationwide priority over others using similar names; they distinguish a product in the marketplace; they provide crucial advantages in trademark infringement lawsuits; and they are instrumental in building goodwill. But if you sell cannabis, a federal trademark registration will not do any of those things for you … because you can’t get one.

Someday, the USPTO policy may change and there could be a gold rush for federal cannabis trademark registrations.The United States Patent and Trademark Office (USPTO) continues to refuse to register federal trademarks for cannabis businesses, even if the sale of cannabis is legal in the state where the businesses are located. The USPTO’s reasoning goes something like this: federal trademark law allows for the registration of trademarks associated with goods in “lawful” commerce, which means that the goods are not illegal under federal law. Cannabis, and its psychoactive component, THC, remain Schedule I substances under the federal Controlled Substances Act (CSA). Therefore, irrespective of state laws to the contrary, and irrespective of whether the federal law is actually enforced, the manufacture and sale of cannabis is not “lawful” commerce.

This reasoning is of fairly recent vintage. In 2009, by which time about fifteen states had legalized medical cannabis, Attorney General Eric Holder announced that the Drug Enforcement Administration would cease raids on state-sanctioned medical cannabis facilities. The USPTO followed Holder’s lead in 2010 and created a new category of acceptable goods and services for marks related to “medical marijuana.” Within months, however, the USPTO had retreated from this “mistake” and changed its practice manual expressly to preclude such registrations.

David Kluft headshot
David Kluft, partner in the Boston office of Foley Hoag, LLP

Many argue that the USPTO’s position is unjustifiable as a matter of public policy. Making it easier to infringe the trademarks of state-sanctioned businesses does not advance the purposes of the CSA, and it directly undermines a key goal of trademark law, which is to prevent the proliferation of confusingly similar trademarks. But the merits of these arguments have been lost on the USPTO, which continues to refuse to register marks for anything it perceives to be prohibited by the CSA.

So if you own a cannabis business, what can you do to protect your goodwill while the federal government maintains its current policy? Below are some ideas. Admittedly, none of them– individually or collectively – is a substitute for federal registration. But each of them is better than nothing, and all of them may help to establish your ownership and priority when and if the USPTO changes its policy.

  1. State Trademark Registrations. Each state has its own trademark registration system. State registration may offer protection from infringers within the state, or at least within the parts of the state where the registrant operates, and for that reason alone it is probably worth the small cost involved. However, state registration will have little to no efficacy outside the state. You cannot use a State A registration to file a lawsuit in State B, or to stop infringement in State B, or even to prevent conflicting registrations in State B. Additionally, most state trademark registrants, unlike federal registrants, do not benefit from presumptions of validity and ownership in the litigation context.
  2. Related Federal Registrations. Many cannabis businesses also pursue federal registrations for whatever aspects of their business are not prohibited by the CSA. For example, even though the USPTO refused the POWERED BY JUJU mark for cannabis vaporizers (because it was CSA-prohibited “paraphernalia”), it allowed the same company to register the same mark for “vaporizers for smoking purposes not for use with cannabis.” The USPTO has also allowed registrations for cannabis-related business consulting (e.g., CANNACARD; PRAIRIEJUANA); investment analysis (e.g., FORTUNE420); clothing (e.g., CANNABIS COUTURE, THE MARIJUANA COMPANY); and for CBD – as opposed to THC – derivatives (e.g., CBD LIQUID GOLD). Once the USPTO permits federal registrations for cannabis marks and the inevitable disputes over ownership arise, such federal registrations for these related products and services are likely to be highly persuasive evidence in the registrants’ favor. Moreover, even in the current legal climate, federal registrations (especially when cited in a demand letter) are of great practical use in convincing others not to use confusingly similar marks.
  3. Common Law Unfair Competition. Unfair competition is a state common law cause of action that was a precursor to modern trademark law, and it is still available to protect commercial goodwill even in the absence of a state or federal trademark registration. However, unfair competition law has similar territorial restrictions as state registration. In some cases, the protected territory may be even narrower, limited only to the area within which the plaintiff can prove consumer recognition of the mark.
  4. Other Intellectual Property Protection. Copyright law, unlike federal trademark law, has no “lawful” commerce requirement, and the U.S. Copyright Office regularly issues registrations for cannabis-related copyrights. While copyright will not protect a short phrase such as a business name, it will protect a creative logo design or original packaging, and can be very effective when it comes to getting infringing uses taken down from the internet. Note also that the USPTO does not appear to have the same qualms about legality when it comes to patents, and it often grants patent protection to useful, new and non-obvious inventions related to the cannabis industry.
  5. Save stuff. Finally, if you do nothing else, save stuff. Document that first sale; keep a copy of that first shipping invoice; and save that file containing your original packaging design. Someday, the USPTO policy may change and there could be a gold rush for federal cannabis trademark registrations. Your lawyer is going to ask you for proof of your first uses of the mark, and you don’t want your response to be a glassy stare. So keep your eyes on the eventual prize and stay ready.

© 2018 Highline Media Group