Cannabis Trademarks: A State Registration Consortium Solution

Washington and Lee Law Review Online, Sep 2017

This article proposes a solution to a problem in the cannabis industry resulting from the unavailability of federal trademark registration for that sector. The author offers modest changes to the existing state trademark registration systems to make up for the gaps at the federal level. The proposed reforms would strengthen the trademark framework by conferring on cannabis trademark registrations presumptions of ownership, exclusive rights, and validity beyond the presumption of registration currently afforded under state laws. To extend protection throughout the geographic breadth of the cannabis marketplace, the states with legalized recreational cannabis would offer reciprocal recognition of state cannabis registrations, meaning that one state in the consortium would recognize a registration issued by another consortium member as if it had issued the registration itself. This reciprocity will limit bad-faith adoption of trademarks by those seeking to usurp the goodwill of a cannabis business operating in a different part of the country.

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Cannabis Trademarks: A State Registration Consortium Solution

Cannabis Trademarks: A State Registration Consortium Solution Russell W. Jacobs 0 1 2 0 University of Washington School of Law , USA 1 Thi s Development is brought to you for free and open access by the Law School Journals at Washington & Lee University School of Law Scholarly Commons. It has been accepted for inclusion in Washington and Lee Law Review Online by an authorized editor of Washington & Lee University School of Law Scholarly Commons. For more information , please contact , USA 2 Russell W. Jacobs, Cannabis Trademarks: A State Registration Consortium Solution, 74 Wash. & Lee L. Rev. Online 159 (2017), https://scholarlycommons.law.wlu.edu/wlul-ronline/vol74/iss1/8 - Cannabis Trademarks: A State Registration Consortium Solution Russell W. Jacobs* This Article proposes a solution to a problem in the cannabis industry resulting from the unavailability of federal trademark registration for that sector. The author offers modest changes to the existing state trademark registration systems to make up for the gaps at the federal level. The proposed reforms would strengthen the trademark framework by conferring on cannabis trademark registrations presumptions of ownership, exclusive rights, and validity beyond the presumption of registration currently afforded under state laws. To extend protection throughout the geographic breadth of the cannabis marketplace, the states with legalized recreational cannabis would offer reciprocal recognition of state cannabis registrations, meaning that one state in the consortium would recognize a registration issued by another consortium member as if it had issued the registration itself. This reciprocity will limit bad-faith adoption of trademarks by those seeking to usurp the goodwill of a cannabis business operating in a different part of the country. * Lecturer, University of Washington School of Law; director, corporate counsel, Starbucks Coffee Company. The views in this Article belong to the author and do not necessarily represent the views of Starbucks. The author thanks Kim Teraberry for her review of a draft of the Article and Signe Naeve for her ideas on the topic. IV. Conclusion .........................................................................179 I. Introduction Legalization of recreational cannabis in eight states as of 2018 continues the transformation of marijuana sales from a criminal enterprise to a retail industry.1 Rather than staying in the shadows or under the radar, sellers now must promote their businesses and distinguish themselves from competitors by using branding and marketing like traditional businesses. Trademark law, however, has not kept pace with these market realities, continuing to treat cannabis sales as criminal rather than akin to 1. Alaska, California, Colorado, Maine, Massachusetts, Nevada, Oregon, and Washington. sales of other tightly regulated but openly sold goods like alcohol or tobacco. In particular, federal trademark registration remains unavailable for marks used in connection with marijuana goods and services since federal law deems those sales illegal. Moreover, cannabis brand owners cannot find meaningful protections in the state trademark systems. In this climate, competitors looking to trade off the goodwill of popular brands or criminals wanting a quick profit from sales of counterfeit products will take advantage of the weak trademark regime. Consumers who look to brands to distinguish between different products stand to lose when they think they have chosen a trusted brand, but end up with a stronger than expected alternative, a poor-quality knock-off or, worse, a dangerous counterfeit. This Article examines how to best regulate cannabis brands in the face of no near-term prospect of federal marijuana legalization or federal registration of cannabis trademarks. Setting aside the policy and moral questions about whether states should legalize marijuana or whether the federal government should allow registration of cannabis trademarks, this Article recognizes both state legalization and federal criminalization as fixed boundaries. Within those limits, the author identifies the state trademark systems as the best option for trademark regulation. Narrow changes in the trademark laws of states that have legalized marijuana could create a consumer protection framework built upon two pillars. First, states would grant registrations with presumptions of validity, exclusive rights, and ownership to trademarks used with legalized cannabis goods and services. Second, states with legalized recreational marijuana dispensaries would offer reciprocal recognition to each other’s cannabis trademark registrations as a means of protecting against cross-border infringements. Part II of this Article sets forth the current state of trademark law for cannabis goods and services. Part III details the proposal to address the gaps in current cannabis trademark protections by utilizing the state trademark registration systems (...truncated)


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Russell W. Jacobs. Cannabis Trademarks: A State Registration Consortium Solution, Washington and Lee Law Review Online, 2017, pp. 159, Volume 74, Issue 1,