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December 15, 2016Download PDF

Cannabis Vaporizers Denied Federal Trademark Protection

This Election Day was historic for many reasons, including the cannabis industry. Marijuana-related measures were on the ballot in nine states, and all but one passed. Florida, Montana, North Dakota, and Arkansas voted on medical marijuana, while California, Nevada, Massachusetts, Maine, and Arizona voted on recreational marijuana. Only Arizona failed.

California’s Proposition 64, which passed with 56% of the votes, garnered particular attention. It legalized the recreational use, possession, cultivation and sale of cannabis for adults 21 and older. So what? Well, California is an influential state. It is not only the most populous state in the country, but also boasts the sixth largest economy in the world (recently surpassing France and India, the world’s seventh and eighth largest economies, respectively). With Proposition 64 on the books, the country’s entire West Coast has now legalized cannabis for both medicinal and recreational purposes.

Despite such significant policy shifts in over half the country—medical marijuana is now legal in nearly thirty states; eight states plus the District of Columbia now permit recreational marijuana; and over twenty states have decriminalized small amounts of marijuana—the federal treatment of marijuana continues to lag behind, which creates challenging contradictions in the legal status of marijuana. This past summer, the federal Drug Enforcement Administration confirmed that cannabis will remain a Schedule I drug under the Controlled Substances Act (“CSA”). And a recent decision from the United States Patent and Trademark Office, which is discussed below, reinforced the federal policy and magnified the contradictions between federal and state laws.

In In re JJ206, LLC, d/b/a JuJu Joints (“JuJu”), Serial Nos. 86474701 and 86236122 (TTAB Oct. 27, 2016), available here, the United States Patent and Trademark Office’s Trademark Trial and Appeal Board affirmed two refusals to register trademarks for marijuana vaporizers. Vaporizers are devices designed to consume marijuana (or tobacco) and are considered a healthier alternative to smoking. The popularity of “vaping,” particularly in connection with tobacco, has risen considerably in recent years.

To qualify for federal trademark registration, a mark’s use in commerce must be lawful. In JuJu, the applicant, who acknowledged that its vaporizers were intended for cannabis use, submitted an intent-to-use trademark application as well as a use-based application. The Board concluded that marijuana’s status as a Schedule I drug under the CSA made it a “legal impossibility” for the applicant to have the requisite “bona fide intent to use the mark [for the marijuana vaporizers] in lawful commerce.” Id. at 3.

The CSA makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia. “Drug paraphernalia” is defined as “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].” 21 U.S.C. § 863(d). The Board classified the marijuana vaporizers as drug paraphernalia, thus disqualifying the applied-for mark for federal trademark registration.

The applicant relied on the legal status of marijuana in the states in which its vaporizers were marketed and sold to argue that their actual and intended use were, in fact, completely lawful. The Board rejected this argument because “the fact that the provision of a product or service may be lawful within a state is irrelevant to the question of federal registration when it is unlawful under federal law.” JuJu at 7.

The applicant also argued that its conduct complied with federal directives such as the Cole Memorandum and, thus, should be considered lawful. The Cole Memorandum refers to an August 2013 memorandum published by the United States Department of Justice (specifically, by former Deputy Attorney General James M. Cole, hence the name), which set forth guidance for federal enforcement activity concerning marijuana in the wake of state legalization of marijuana and the conflict with federal law. The Cole Memorandum listed certain “enforcement priorities” to guide federal enforcement of the CSA and instructed federal prosecutors to review marijuana cases on a case-by-case basis with the primary question being whether the conduct at issue implicates one or more of the “enforcement priorities.” The JuJu Board dismissed this argument because the Cole Memorandum does not override the CSA under which marijuana paraphernalia is strictly prohibited and, in any event, the Cole Memorandum “explicitly underscores that ‘marijuana is a dangerous drug and that the illegal distribution and sale of marijuana is a serious crime.’” JuJu at 9.

The Board also rejected all of the applicant’s policy arguments, opining that to the extent policy issues are relevant in the context of trademark registration, Congress has resolved them against the sale of marijuana paraphernalia. Finally, the Board rejected the applicant’s attempt to liken the marijuana vaporizers to e-cigarettes and the alcohol industry, noting that the cannabis industry is illegal under federal law.

JuJu makes it clear that, despite the tremendous win for cannabis on Election Day and the nation’s budding cannabis industry and its attendant innovation and competition, federal trademark protection remains out of reach for state legal marijuana-related products, at least for now.