Currently, the state of California follows the Model Trademark Act, which uses the U.S. Patent and Trademark Office (“PTO”) classification of goods and services.
Generally, a trademark registration must list the goods and services with which the mark is used for administrative purposes. Since the PTO won’t register a mark that is used in connection with a cannabis product since all such products are illegal under federal law, California took the position that none of the PTO classes include cannabis product. Therefore, no California trademark registration could issue for a mark covering such products.
Marsha Gentner, senior counsel in Dykema’s IP Group, sat down with Inside Counsel to discuss cannabis trademark in more detail. These days, Gentner focuses her practice on the management of global trademark portfolios, and is also a member of the firm’s Cannabis Law practice group.
Right now, Assembly Bill 64 is pending before the California legislature. This bill, “for purposes of marks for which a certificate of registration is issued on or after January 1, 2018, would, notwithstanding those provisions, authorize the use of specified classifications for marks related to medical cannabis and nonmedical cannabis goods and services that are lawfully in commerce under state law in the State of California.”
“The registration process is the same no matter what type of goods are involved. The PTO will not register a trademark for cannabis goods or services, because in order to federally register a mark, the mark must be in use (or intended to be used) in commerce and the PTO and courts always have interpreted this to mean lawful use in commerce,” explained Gentner. “Under federal law, there is no lawful distribution/sale of cannabis, so the PTO reasons there cannot be a lawful use in commerce of a cannabis mark, and therefore, there cannot be registration.”
Virtually every state has its own registration system, and they take a variety of forms. According to Gentner, in some states that do not tie their registration system to the PTO practice or procedure, and where medical or recreational cannabis is legal, the state trademark system can be used, but that will protect only from infringement occurring in that particular state.
The PTO website states, “A plant paten is granted to an inventor…who has invented or discovered and asexually reproduced a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state. The grant, which lasts for 20 years from the date of filing the application, protects the inventor's right to exclude others from asexually reproducing, selling, or using the plant so reproduced.”
“Although a patent application generally is not publically available while pending, it seems to be common knowledge that there are a number of cannabis plant patent applications pending before the PTO that have not yet matured to the grant stage,” she said. “However, since there is no ‘lawful use’ requirement for patents, it seems unlikely the PTO will refuse to grant such a plant patent simply because growing cannabis is still illegal under federal law.”
In fact, the US government (HHS) has a cannabis patent, no. 6,630,507, issued in 2003. The patent is for the use of certain cannabinoids found within the cannabis sativa plant to treat neurodegenerative diseases such as Alzheimer's, according to Gentner.
So, what other states are next in line to do this? Washington, Oregon and Colorado already have allowed the registration of cannabis related marks, said Gentner. Other states where medical or recreational marijuana is legal may not need special legislation to allow for state trademark registration for cannabis related goods and services because such registration may already be available.