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
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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
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