Willie Nelson has “Willie’s Reserve“. Snoop Dogg has “Leafs By Snoop“. And rumor has it that Bob Marley’s heir’s will have their own brand out soon. As more states legalize medical and even recreational marijuana, brands and trademarks are starting to make their way into the industry (of course, in the pure sense of a trademark, they have been in the industry for a long time). The discord between state and federal laws is making things difficult, however. Even though these businesses are legal at the state level, they are illegal at the federal level. Marijuana is still a class I controlled substance according to the federal government. That means that, in addition to other problems like no access to banks, marijuana businesses don’t have access to federal trademark registration and protection. Companies with established brands have not been shy about using those federal rights against marijuana businesses, however.
(Looks like a high end meat rub)
Federal trademark rights are based on use of the trademark in interstate commerce. It’s quite difficult to claim legitimate use in interstate commerce and the accompanying trademark rights when your product is illegal under federal law. The unlawful use doctrine is normally a difficult affirmative defense for trademark infringement as it is narrowly applied. However, selling marijuana in contravention of federal law is a pretty clear example and the unlawful use defense would seem to be a slam dunk should any marijuana business attempt to stop other entities from using its trademarks.
That got me wondering how these businesses and star-sponsored lines will protect their brands. Without federal registration available, they will have a tougher time. However, one clear option is registering at the state level. Most, if not all, states have state level trademark registration. For a nominal fee you can register your trademark with the state and enjoy some protections through state courts. The fees and paperwork burden obviously increase with the number of states involved, so this option is not as attractive as federal registration, but it is a viable alternative for those without federal registration as an option.
I was curious to see if anyone was attempting to reserve rights at the federal level in obvious and common marijuana related names. The answer: of course they are. The tide seems to be moving towards nationwide acceptance at a pretty rapid pace so people have obviously tried to get ahead of the game. Many are in the application stage but there are a number that have been registered. There’s Pineapple Express for cigars (undoubtedly influenced by the movie of the same name), Purple Haze for, among other things, electronic cigarettes and tobacco products, and White Rhino for tobacco. And then there’s this for clothing. While I am sure all of these are doing legitimate business, I can’t help but think that some out there may also be hoping that, if and when it is legalized at the federal level, marijuana will be seen as a similar good to tobacco products. If so, a good number of companies will have a powerful card to play to force licensing if anyone wants to use these terms as part of their brand.
It will be interesting to see how Willie’s Reserve’s common law rights will be interpreted if someone else holds the registration for Willie’s Reserve for tobacco products.