Numerous conflicts exist between federal and state laws regarding the legality of medical marijuana use. One issue resulting from the conflict is a cannabis company’s inability to obtain trademark protection for its brands. Under federal trademark law, a trademark registration will only be granted in connection with goods and services lawfully regulated by commerce. Because marijuana, a Schedule 1 controlled substance, is illegal under federal law, marijuana and related paraphernalia are incapable of procuring trademark registration.
Though these products cannot receive federal trademark protection, consumers are not dissuaded from purchasing marijuana products and services. While Wisconsin has not legalized the use of medical marijuana, twenty-three states, as well as Washington D.C., have enacted laws legalizing its use for medical purposes. Medical marijuana is an estimated $2.7 billion industry. As a result, marijuana brands produce not only a consistent revenue stream but also an immense potential for consumers to become confused about the relevant products. Although the brands cannot receive federal trademark protection, a company may employ other avenues to protect its brand.
In states where the use of marijuana is legal, marijuana brand owners can maintain state common law trademark rights. Common law trademarks allow trademark owners to bring infringement claims under state law. However, common law protection is typically limited to the geographic area where the mark has a presence, and the mark will not receive nationwide protection.
Additionally, brand owners may register their marks within a state where marijuana use is legal. State registration of a marijuana mark puts other potential registrants on notice that the mark is being used. State registration can also establish prior use of a mark which is significant in a state infringement action.
Another possible form of protection is copyright registration. The Copyright Act focuses on the originality of the work. Thus, marijuana companies can register its copyrights in the text, artwork and/or other promotional materials used to promote its products as long as the work is sufficiently original and contains sufficient authorship. Copyright registrations can be used to fight counterfeit products and brands.
In the end, cannabis companies cannot bring federal trademark infringement claims against imitators. Consequently, cannabis companies interested in intellectual property protection must utilize a combination of common law, state, and copyright protections while the law of federal trademark protection progresses.