Trademark owners in the cannabis field keep trying new ways to register their marks, and who can blame them? Branding is everything in an increasingly online world, and protecting your brand's reputation is paramount to staying in business, especially when you operate in an industry mired in legal grey areas. The cannabis industry is growing and the laws are constantly evolving, seemingly more quickly in recent years.
Nevertheless, as the late great RBG said in her confirmation hearing (https://www.loc.gov/law/find/nominations/ginsburg/hearing.pdf), "Real change, enduring change, happens one step at a time." The Trademark Trial and Appeal Board is happy to flow with this slow pace of change, as seen in the latest CBD-related decision (https://ttabvue.uspto.gov/ttabvue/ttabvue-87864999-EXA-8.pdf), in which the Board affirmed long-standing precedent that "use in commerce" necessarily means "lawful" use.
The Applicant in In re NL LLC applied to register its mark in connection with supplements containing CBD, and the USPTO issued a refusal. The Applicant appealed, arguing that the Lanham Act does not specify the use in commerce must be "lawful." According to the Board's written opinion, the Applicant did not cite any authority for its position. The Board affirmed the USPTO's decision, explaining that, despite the absence of "lawful" in the statutory language of the Lanham Act, there is longstanding precedent in federal courts to support its position. Courts have reasoned in part that, to register marks in connection with unlawful goods and services under federal law would, "as a logical matter...put the government in the 'anomalous position' of extending the benefits of trademark protection to a seller based upon the actions the seller took in violation of that government's own laws."
The Court also threw in some constitutional law for good measure, reminding us all that the Supremacy Clause "unambiguously provides" that if there are conflicts between federal and state law, federal law prevails. In plain language, this means if the goods are lawful under state law (in this case Colorado) but not federal, applicants still cannot get a federal trademark registration. We touched on this and different options available to trademark owners in this position in a prior post (https://www.blunttruthlaw.com/2019/03/likely-to-be-dazed-and-confused-the-hazy-future-of-cannabis-related-trademarks/).
Change is coming, though, and all signs point to supplements one day being approved by the FDA, so hopefully soon, business owners offering CBD-related products and services will enjoy the benefits of a federal trademark registration.
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