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By Fred Rocafort, Attorney at Harris Sliwoski
Goods and services (G&S) identifications are a critical part of a cannabis trademark application, as with any other trademark application. An improper identification can delay an application, and in the worst cases prove fatal. Cannabis brands in particular have to be very careful when it comes to G&S.
Trademark rights are linked to specific goods and services (or, said differently, products). If my neighbor starts using the name Gina’s Lawns in connection with her lawn care business, she can establish trademark rights in that name in connection to lawn care services. Nothing prevents me from using the same name in connection to my own business selling, say, cell phone cases. Needless to say, it would be an odd choice for a cell phone case business, even if I wouldn’t be infringing on Gina’s trademark rights.
For cannabis brands, the key issue when it comes to identifying goods and services (and indeed trademark applications more generally) is the legality under federal law of the identified products. Simply put, under what is known as the lawful use requirement, USPTO will not register a trademark in connection to goods and services that are unlawful according to federal law. This includes marijuana, as defined in 21 U.S.C. § 802(16), which is a Schedule I substance under the Controlled Substances Act (CSA). It also includes many hemp products that are considered illegal under FDA‘s interpretation of the Federal Food, Drug, and Cosmetic Act (FD&C Act or FDCA). Beyond cannabis, USPTO has refused to register trademarks in connection with products such as Cuban cigars and certain insecticides.
The legal justification for refusing to register trademarks in connection to marijuana is debatable, but at least a bright line exists that canna brands can follow. There is (far) less of a bright line when it comes to hemp products, with their regulation by FDA very much in flux, but at least in certain cases the illegality under the FD&C Act of certain products is pretty obvious (for example, in the case of a CBD food). But when we get to the application by USPTO of the drug paraphernalia laws, things get wacky.
Drug paraphernalia is broadly and subjectively defined under federal law. As we have explained before, “this creates a fraught situation from a legal standpoint, as an imported product’s legality may hinge not on its immutable characteristics, but rather on subjective factors.”
Take a water pipe made in Jordan. If the importer of that product is a company that sources Middle Eastern products, including flavored tobacco, and refers to the pipes as shisha or argileh on its website, they are unlikely to face issues upon entry into the United States on drug paraphernalia grounds.
On the other hand, if the importer calls the product a water bong and alludes to cannabis on its advertising, there is a good chance the products will be seized as drug paraphernalia.
Taken to an extreme, this conception of drug paraphernalia could lead to innocuous products such as lighters and ashtrays to be considered drug paraphernalia. Sadly, things often are taken to the extreme. And if it’s silly for lighters to be seized as drug paraphernalia, it is downright absurd for USPTO to take issue with the identification of lighters as goods, on drug paraphernalia grounds.
But that is exactly what’s happening. Recently, USPTO has denied applications for trademarks used in connection with several smokers’ articles, including lighters, rolling papers, and ashtrays. In order for the applications to go through, USPTO required the addition of language to the G&S identification clarifying that the products were to be used exclusively with hemp.
Look, a lighter is a lighter, and an ashtray is an ashtray. Yes, the lighter could be used to ignite a marijuana cigarette, but it could also be used for a host of activities that are not illegal under federal law. Should G&S identifications for firearms include caveats that they are not to be used to commit crimes?
In any case, whether the lighter or ashtray or rolling paper is used with marijuana or hemp or tobacco is a question of fact that will be determined by the user of the products. Conditions encountered by law enforcement when they seize drugs can in some instances support the characterization of a product as paraphernalia, even in cases where there are legal uses for that same product. However, by definition, such products cannot be drug paraphernalia prior to use, just as guns and cars can only become instrumentalities of crime after someone uses them.
There is also a whiff of prejudice in USPTO’s actions. Are lighters sold by canna brands more likely to be used to smoke marijuana than those sold at gas stations? Maybe, but would anyone seriously argue that gas stations lighters are not broadly used to smoke marijuana?
There is clearly a bias against cannabis brands, and the more you think about it, the more it seems like USPTO just has a general beef against cannabis companies. Because this is clearly not about what lighters are going to be used for. And if it is, then it might be even more concerning that government officials live in a world in which marijuana smokers get their lighters from cannabis stores, while those lighters sold at CVS are only used for wholesome purposes like tobacco smoking.
We can and should point out the ridiculousness of this approach: USPTO should never object to the G&S identification of a lighter, period. But, at least, for now, it is what it is. To avoid issues, cannabis brands need to identify their goods and services carefully.
Re-published with the permission of Harris Sliwoski and The Canna Law Blog
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