Trademarks in the Cannabis Industry

21-05-2018

This year’s Professor vs. Practitioner Debate saw two professionals wrestle with the topic of trademarks in the cannabis industry. Aislinn Burton reports.

At yesterday’s much-anticipated Professor vs. Practitioner Debate, INTA registrants voted in favor of the United States Patent and Trademark Office (USPTO) registering trademarks for cannabis products.

Session CSU23 Professor vs. Practitioner Debate: Trademarks in the Cannabis Industry was moderated by Megan Carpenter, University of New Hampshire School of Law, Franklin Pierce Center for Intellectual Property (USA).

Ms. Carpenter described the annual Professor vs. Practitioner Debate as “a verbal professional wrestling match, minus the tights and minus the theme music.”

"A verbal professional wrestling match, minus the tights and minus the theme music."

Currently, the USPTO will not grant trademark registration if goods and services covered by the mark cannot be lawfully regulated by Congress.

Although 31 states have legalized cannabis use in some form, marijuana remains illegal under federal law and the USPTO therefore refuses to register marks for cannabis products.

“The federal ban is impeding the normalization of the industry,” Ms. Carpenter noted, which includes the inability to obtain trademark registrations in the cannabis space.

Speaking in favor of the USPTO registering marks for cannabis products was Shabnam Malek, Partner and Co-Founder of Brand & Branch LLP (USA). Ms. Malek was opposed by Robert Mikos, Professor of Law at Vanderbilt Law School (USA).

Ms. Malek, who noted that legal cannabis sales in the United States totaled US $9.2 billion last year, said that brand owners need to obtain trademarks at the federal level to best-protect consumers in what is clearly a growing industry.

Ms. Malek argued that the possibility of consumer harm is very real in the cannabis industry, but it can be mitigated by allowing brands to register and enforce trademarks at the USPTO.

Brands and trade dress associated with cannabis products travel across state lines even while the products cannot, Ms. Malek explained. Therefore, consumers come to associate branding with certain products, yet these identifiers cannot be registered as federal trademarks.

Mr. Mikos countered that having the USPTO grant national trademark protection to products that are illegal under federal law is “unnecessary, unwise, and unauthorized.”

He explained that the marijuana industry is already “heavily regulated” and trademark registration is therefore “unnecessary” to protect the health and safety of consumers.

Mr. Mikos pointed to the fact that each of the 31 states in which cannabis is legal have distinct products, producers, and policies. This allows for “a unique set of products and players,” which a uniform and nationally-run system would not, Mr. Mikos explained.

“If we grant national trademark rights, those national trademarks could help eviscerate these differences; they would undermine state laws and enable cannabis firms in one state, with one set of laws, to promote the product elsewhere—even where the product is illegal,” he said.

Mr. Mikos asserted that Congress could, if it wished, change the federal law which determines the legality of cannabis across the whole of the United States, rather than asking the USPTO to grant trademark protection now.

At the end of the debate, a majority of spectators voted in favor of the USPTO granting trademark registrations for cannabis products.

INTA, INTA18, cannabis, trademark registration, USPTO, federal law, Congress, Vanderbilt Law School, Brand & Branch

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