In about half of these United States, the personal consumption of cannabis, or marijuana, has been legalized in some form. Eight states have gone so far as to legalize the recreational use of marijuana, four of which were just approved by voters in the recent U.S. election: California, Nevada, Massachusetts and Maine. Four other states expanded the legal use of marijuana for medical purposes during the recent election, as well. These measures indicate a great shift in public and political opinion on the psychoactive drug, which has faced limitations from the U.S. federal government going back to the passage of the Marihuana Tax Act of 1937. Since 1970, marijuana has been federally classified as a Schedule I drug under terms of the Controlled Substances Act. But medical uses for marijuana have been recognized at the state level since the mid-1990s, with California becoming the first state to legalize medical marijuana in 1996. Legalization of the recreational use of marijuana at the state level has only begun very recently in 2012, when Colorado and Washington became the first two states to legalize recreational use for adults.
Despite the strict marijuana prohibitions that have existed at the state and federal levels through most of the 20th century, in some ways it could be argued that marijuana is nearly as American as apple pie, the byproduct of an economic staple crop which was very important to the livelihoods of Americans in colonial times. In 1619, the Virginia Assembly, the first representative assembly representing a New World commonwealth, ordered farmers in the commonwealth to grow hemp, the plant which naturally produces cannabis as its flower; hemp was an important fiber used in the production of sails, clothing and rope. The Virginia Assembly may not have the clout of the U.S. Constitution or the Declaration of Independence, but it’s an important American document because it represents the first time that representatives of an American commonwealth adopted a foundational government document based on consent. (Although it’s interesting to note that while the Virginia Assembly actively promoted production of the hemp plant, and therefore increased marijuana production, it penalized both “gaming at dice and cards” and “drunkeness,” so it’s likely that inebriation due to marijuana use was frowned upon.) By the late 19th century, marijuana was seen in pharmaceutical products being openly sold and at “hashish-houses,” or parlors where marijuana could be enjoyed recreationally, which were found in major U.S. cities like New York, Philadelphia, Chicago and Boston. Federal prohibition of cannabis began in 1906 with passage of the Pure Food and Drug Act, which lumped cannabis into a group of “addictive” and “dangerous” drugs along with alcohol, opium and morphine.
The federal opinion on the legality of marijuana for recreational or even medical usage may very well remain the same in the years to come, especially with Trump’s early cabinet choices for attorney general and health secretary. This makes for an interesting disconnect between state-level legalization efforts and federal criminal statutes which is proving to be a difficult labyrinth to navigate for some business interests. One of the front lines in the conflict between pro-marijuana business interests and federal drug laws involves the denial of trademark registration on goods related to marijuana thanks to a little known federal statute passed in 1989, Title 37 Code of Federal Regulations (CFR) § 2.69. This statute reads:
“When the sale or transportation of any product for which registration of a trademark is sought is regulated under an Act of Congress, the Patent and Trademark Office may make appropriate inquiry as to compliance with such Act for the sole purpose of determining lawfulness of the commerce recited in the application.”
In other words, the U.S. Patent and Trademark Office can deny federal registration of a marijuana-related trademark because the use of the mark in commerce doesn’t comply with the Controlled Substances Act. Although many are quick to look at the Lanham Act’s prohibition against registering trademarks which comprise “immoral” or “scandalous” manner, it appears that 37 CFR Section 2.69 is a tougher hurdle for marijuana-related businesses to overcome in the courtroom.
A decision to deny trademark registration for two marks to be used on marijuana related goods was handed down in late October by the USPTO’s Trademark Trial and Appeal Board. On October 27th, a TTAB judicial panel decided In re JJ206, LLC by refusing to register two trademarks which were being sought by JUJU Joints, a developer of pre-loaded cannabis oil devices. TTAB affirmed trademark examiner decisions that two standard character marks, “POWERED BY JUJU” and “JUJU JOINTS” cannot be registered for federal trademark protection “because Applicant’s identified goods constitute illegal drug paraphernalia under the [Controlled Substances Act].” JUJU Joints was seeking to use the marks in commerce for goods such as smokeless cannabis vaporizing apparatuses and cannabis delivery devices.
JUJU Joints lost out on its legal challenge to the denial of trademark registration with a novel argument which makes this case a precedential one for TTAB. Counsel for JUJU Joints argued that JUJU Joints only sells in states where the sale of its products are legally permissible by law and brought up the Cole Memo to support its case. The Cole Memo was issued in August 2013 by then-Deputy Attorney General James Cole and it instructed all U.S. attorneys to not consider the size or commercial nature of a marijuana-related business operation as the only criteria when assessing whether the operation violates an enforcement priority of the U.S. Department of Justice (DOJ). “Therefore, the Applicant’s goods are in lawful use in commerce within the states across the United States,” reads a request for reconsideration filed by JUJU Joints counsel with TTAB this February. TTAB’s October 27th final decision rejected that argument, noting that the Cole Memo “does not and cannot override the CSA, and in fact, explicitly underscores that ‘marijuana is a dangerous drug and that the illegal distribution and sale of marijuana is a serious crime;’” the Cole Memo does include that language in acknowledgment of what Congress had previously determined about marijuana’s legality.
And yet, there are trademarks for cannabis-related goods which have been registered to the principal register, affording those marks the strongest possible protections under U.S. trademark law. JUJU Joints brought up a few of these in its arguments. One of these marks which is still live is U.S. Trademark Registration No. 4315305, which protects a illustration including words mark for “CANNABIS ENERGY DRINK” and additionally claiming green and white colors in the mark. It covers the use of the mark on goods such as “energy drinks and sports drinks, including performance drinks, not included in other classes, containing cannabis seed extract or mature cannabis stem extract.” Another one of the marijuana trademarks which still enjoys a live registration on the principal register is U.S. Trademark Registration No. 4651863, which protects a standard character mark for “CCOP” and used to advertise services such as “retail store services featuring hemp based products”; it’s not readily apparent through an online search that any such store exists, but the trademark is live and registered. A USPTO office action sent on February 25th seems to address this argument with the statement, “action on other applications has no bearing on the current proceedings. Prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board.”