Is the US cannabis trademarks ban ‘untenable’?

It’s an exciting time for anyone who has a stake in legalising cannabis in the US, including brand owners. In the past decade, 11 states have legalised the plant outright, while 33 permit it in some for medical use.

Looking at the current race for the White House, with most Democratic candidates calling for further liberalisation of federal restrictions, it seems as though cannabis has never been more acceptable in the US mainstream.

And yet brand owners remain unable to register federal trademarks covering cannabis-related goods and services, owing to the fact that the drug is still illegal at a federal level.

In a country that is rapidly embracing legalisation at a local and state level, the ban is one of the biggest remaining hurdles to the sector’s commercial success.

According to attorney Robert Greenberg, however, the US Supreme Court has already provided a solution in the form of last year’s ruling in Iancu v Brunetti which, together with 2017’s Matal v Tam, overturned the ban on ‘scandalous’ and ‘immoral’ trademarks.

In an article published in the Cannabis Law Journal earlier this year, Greenberg argued that the prohibition of federal cannabis marks was “untenable” in light of the Supreme Court’s rulings in these two landmark cases.

“The First Amendment issues inherent in these decisions logically extend to those of cannabis trademarks,” Greenberg wrote.

‘In use in commerce’

But, speaking to WIPR, lawyers have questioned the extent to which Brunetti and Tam will provide any relief for cannabis brand owners, re-opening up the debate about the cases’ implications, and the future of cannabis marks.

In those decisions, the Supreme Court ruled that the Lanham Act’s ban on scandalous and immoral trademarks marks was unconstitutional because it discriminated based on viewpoint.

“Were the USPTO refusing trademarks covering cannabis goods based on Section 2(a) the Lanham Act, which was the provision at issue in Tam and Brunetti, I would agree with the assessment that the USPTO's stance is untenable,” says Danielle Johnson, associate at  Goldberg Kohn.

“But the USPTO refuses such applications under Sections 1 and 45 of the Lanham Act, which require that goods be ‘in use in commerce’,” she says.

According to Johnson, the USPTO’s current policy on cannabis does not “require or even allow examining attorneys to make a judgment about the morality or offensiveness of the mark at issue”.

We are then faced with the somewhat strange situation of the USPTO refusing registration for marks on the grounds that they are not “in use in commerce”, when they may, in fact, be legal at a state level.

“They’re in use in commerce, it’s just that it’s a federally illegal part of commerce,” Greenberg tells WIPR.

“It’s a question of whether we are going to ignore the reality that these are, in fact, used in commerce?”.

He argues that the “USPTO’s stance on cannabis trademarks is untenable in light of Tam and Brunetti” because, like the scandalous and immoral marks ban, it discriminates based on viewpoint.

Illegality ‘still the main issue’

So can Tam and Brunetti have any immediate impact on the registrability of cannabis marks?

“Tangentially or anecdotally, yes—but directly, probably not,” says George “Trey” Lyons III, partner and co-chair of the recently established Cannabis Practice Group at McDonnell Boehnen Hulbert & Berghoff.

“Those cases, while incredibly important for US trademark law, don’t go to the heart of the issue here, which is the illegality of cannabis use under US federal law,” Lyons says.

“What those opinions do tell us though is that the Supreme Court is taking a harder line on protecting the First Amendment and increasing the burden for the USPTO to reject any marks for simply being scandalous or immoral,” he added.

This could open up a path to registration for marks that are related to or reference cannabis but don’t actually cover any illegal products themselves (Lyons gives the example of a t-shirt that says ‘Smoking Cannabis Is Cool AF’).

Brand owners will hope that Greenberg is right and that the Supreme Court’s interventions in defence of the First Amendment will help them secure their first federal trademark registrations for cannabis products.

Otherwise, it will require a major change in the law at a federal level. If Tam and Brunetti don’t prove to be watershed moments for cannabis trademarks, perhaps November’s presidential election will be.

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