A trademark is a mark that identifies goods or services as coming from a particular source. To register a trademark with the federal government, a trademark owner must identify the goods and/or services with which the trademark is to be used. Since trademark rights are tied a particular good or service, two parties may register the same trademark for two different goods or services, as long as the registrations are not likely to cause confusion in the minds of the purchasing public. Although applicants for trademark registration are free to define their own goods and services, the United States Patent and Trademark Office (USPTO) provides specific categories to facilitate the approval process.
The New Category
According to the Wall Street Journal, on April 1, 2010 the USPTO created a new trademark category for “Processed plant matter for medicinal purposes, namely medical marijuana.” Although medical marijuana is legal in 14 states, federal law still classifies it as a Schedule I drug (the same classification as heroin), under the Controlled Substances Act.
Admission of Guilt
Under 15 U.S.C. § 1051, an application for trademark registration requires the applicant to list the date he or she first started using the trademark in commerce in association with the goods or services. Were it so inclined, the federal government could use a medical marijuana trademark application to criminally convict the applicant under the Controlled Substances Act. Although it would seem like the federal government would have more important ways of spending its time, there is nothing preventing such prosecutions. If your lawyer is suggesting you file a paper with the federal government, admitting you are breaking the Controlled Substances Act, you may want to consider wether such a lawyer has your best interests at heart.
Protection Without Punishment
Criminal penalties notwithstanding, the USPTO received 57 trademark applications under the new medical marijuana category. Before granting any of the applications, the USPTO withdrew the new category. Although USPTO spokesman admitted “it was a mistake,” marijuana retailers continue to file pot-related registrations for goods other than marijuana itself. This may well serve to stake out the intellectual property landscape in the event marijuana becomes legal. With the administration’s weakening stance on marijuana enforcement, taking such preemptive steps to secure one’s intellectual property in this soon to be burgeoning market may be time and money well spent.
HT: Dan McCracken