Much of the art of trademark practice lies in crafting the
"description of goods and services" that must be included
in every application for federal registration. The
description of goods and services is crucial because it defines the
scope of protection afforded to the mark.
The primary objective, of course, is to write a description that is
broad enough to ensure that the mark gets all the protection to
which it is legitimately entitled.
At the same time, a frequent secondary objective is to write a
description that is narrow enough to navigate around existing
registrations for similar trademarks that might otherwise pose
obstacles to registration. Resolving the tension between these two
objectives is part of what trademark lawyers do all day.
Sometimes there are other hazards to be navigated.
Consider the interesting case of legalized marijuana.
Twenty-three states and the District of Columbia currently have
laws legalizing marijuana in some form. Most of these pertain to
the sale of marijuana for medical use, requiring a doctor's
prescription. Four states (and the District of Columbia) have gone
further and legalized the sale of marijuana for
"recreational" use.
Either way, there is a large and growing number of businesses in
the lucrative, and highly competitive, marijuana market.
These businesses naturally want to develop brand
identities, attract and retain market share, and ward off
unscrupulous competitors. So they seek to register their names as
trademarks. Several of them have been surprised to
discover that they cannot do so.
Why not? Because state laws to the contrary notwithstanding,
federal law – specifically, the Controlled Substances Act
– proscribes the sale of various drugs, expressly including
marijuana. And because the Trademark Office is in the business of
dispensing a federal benefit, it looks to federal law to determine
what is legal. Trademark applications that describe the
goods simply as "marijuana" or "cannabis" are
routinely rejected on this basis.
So are sellers of legal (under state law) marijuana simply out of
luck when it comes to obtaining federal trademark protection? Not
necessarily.
Most businesses that sell marijuana probably don't just sell
marijuana. They also provide (or could provide) goods and services
that are clearly tied to marijuana use but are not illegal.
Prospective customers would have little trouble connecting the
dots. By registering their trademark for these
"connected" goods and services, legitimate marijuana
dealers can obtain at least a measure of protection for their
brandmarks.
Here are several actual goods/services descriptions for
marijuana-related businesses that have been accepted by the
Trademark Office:
- "Providing consumer information in the field of medical or therapeutic marijuana."
- "Providing an Internet website portal featuring current events information, news and commentary in the fields of cannabis, medical marijuana, hemp, and industrial hemp."
- "Providing a searchable online advertising website and informational guide featuring the goods and services of other vendors via the internet in the field of marijuana." (This from a registration for the mark MARIJUANA FOR SALE, which leaves little to the imagination.)
- "Tetrahydrocannabinol vaporizors for legal use with medical marijuana."
- "Retail sale of books about marijuana, caps, t-shirts, bumper stickers; posters; printed paper signs."
Registering your trademark solely for ancillary products or services is undoubtedly less than ideal. But it's better than nothing. It just goes to show that in brandmarking, as in so many other areas, where there's a will – and a little creativity – there's a way.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
