The burgeoning marijuana industry in Colorado has presented a number of new legal questions for cannabis businesses and lawyers alike – and large uncertainty still exists surrounding the ability to protect intellectual property in the industry. For those wanting to trademark products or services directly involving cannabis, they face futility before the United States Patent and Trademark Office; however, for those wanting to trademark tangential products or services, they may have more luck in obtaining legal protection for their brand.
Under current law, products or services directly involving cannabis simply cannot be trademarked, at least not on a federal level. This is because federal law (the Lanham Act) mandates protection for federal trademark protection, and excludes anything considered “immoral, deceptive, or scandalous.” This exclusion includes anything expressly prohibited by federal law, as in the case with marijuana.
Those looking for some protection for goods or services directly involving cannabis, may find some reprieve under common law trademark rights, which protect a brand in the geographical area where it’s used. This means that though the mark may not be protectable under federal law, it may receive some protection within the state of Colorado. It remains to be determined how much protection state-level trademarks actually receive in the area – a determination that will likely be made through litigating this novel legal issue in the future.
Goods and services that tangentially involve marijuana may be a different story, and it’s possible to obtain a federally registered mark for these goods or services. This may include, for example, pipes, vaporizers, clothing, security, and entertainment or tourism services. These types of goods and services can be filed apart from marijuana, yet still provide service providers, manufacturers, and retailers a way to legally protect their brand.
Despite the possibility, any business or individual looking to trademark these goods are services can expect heightened scrutiny from the USPTO, and applications to the UPSTO must be carefully drafted and prepared.