The United States Patent and Trademark Office (“USPTO”) is at odds with the ever-growing marijuana industry. While marijuana legalization was a big winner in November’s elections, with seven states legalizing either medical or adult recreational use of the drug, the burgeoning industry may run into some problems obtaining trademarks for marijuana products and related devices. The lack of trademark protection could slow down or inhibit the growth of the industry as the lack of trademark protection limits entrepreneurs’ ability to stop infringement and protect their rights.

In its October ruling on the case In re JJ206, LLC, d/b/a JuJu Joint (case numbers 86474701 and 86236122), the Trademark Trial and Appeal Board (the “Board”) refused registrations of marks for marijuana paraphernalia based on lack of bona fide intent to use the mark in lawful commerce. To qualify for a trademark, the applicant must show a bona fide intent to use the mark in commerce. Additionally, the use of a mark in commerce must be “lawful.” The Board has interpreted this to mean that any goods for which the marks are used must not be illegal under federal law (since the applicant is seeking federal trade mark registration). According to the Board’s logic, if there is no “lawful” use of the goods, there cannot be a bona fide intent to use the mark, on the goods, in lawful commerce.

The Board rejected registration of the marks “Powered by JuJu” and “JuJu Joints,” both marks to appear on “vaporizing cannabis delivery devices.” While the applicant explicitly identified the goods as devices for vaporizing marijuana, it also argued, in its appeal, that the vaporizers should be considered analogous to e-cigarettes (also vaporizing devices). However, the Board rejected this argument, reasoning that the goods were primarily designed for inhaling marijuana and thus constituted illegal drug paraphernalia under the federal Controlled Substances Act. The Board also noted that while marijuana, and thus the vaporizer, are legal in some states, such facts have no bearing on federal law. Additionally, even though federal prosecutors have adopted a “hands off” approach to marijuana in states where the drug is legal, this does not render the drug legal under federal law.

Even if applicants do not explicitly identify their goods as designed for marijuana in their applications, the Board and the Trade Mark Examining Attorneys at USPTO will look to actual use to determine legality of the product. The Board recently rejected registration of the mark “Herbal Access” for use on a retail store featuring “herbs.” The applicant submitted photos of the retail store with the mark and a green cross, and the applicant’s webpage indicated the mark was used in connection with medical marijuana services. Even though the applicant never mentioned marijuana in the application, the applicant could not establish a bona fide intent to use the mark in lawful commerce, given the intended use clearly included marijuana sales.

In sum, even though marijuana is gaining popularity and voters continue to legalize this substance, federal trademark protection will continue to elude purveyors of marijuana products and services for the foreseeable future. Companies working in the industry should for the present consider seeking multiple state trademark registrations in those growing number of individual states that have legalized marijuana.