By: Emily Wilmink

In 1971, President Richard Nixon launched the “War on Drugs” that drastically increased the role of the federal government in controlling illegal drug use.[1] However, this measure led to the mass incarceration of nonviolent drug offenders, and today, continues to shape a federal system that disproportionately convicts communities of color.[2] Within this system, the disproportionate convictions stem from marijuana use,[3] so many Senators have proposed legislation that would legalize the drug and ultimately stop subsequent arrests. However, Senator Elizabeth Warren has taken legislative action a step further by proposing a federal cannabis pardon.[4] This cannabis pardon could release millions of nonviolent drug offenders and bring justice to communities of color that have been targets of the War on Drugs for years.

Between 2010 and 2018, more than six million drug arrests occurred in the United States.[5] Specifically, in 2018, nearly 700,000 people were arrested for marijuana use, which made up 43% of the total drug arrests in the country.[6] Of those marijuana arrests, 89.6% were for mere possession of marijuana.[7] In 2019, the FBI reported 545,602 arrests for cannabis-related crimes, which was 9% higher than the 495,871 arrests for violent crimes in the same year.[8] Further, similar to the numbers in 2018, in 2019, 92% of the marijuana arrests were for mere possession of the drug.[9] While marijuana arrests already make up a large portion of the overall drug arrests in the United States, out of these arrests, Black Americans are 3.64 times more likely than White Americans to be arrested for marijuana use even though both groups use marijuana at the same rates.[10] Additionally, the ACLU reports that in thirty-one states, racial disparities in arrest rates were larger in 2018 than in 2010.[11]

Currently, twenty-seven states have decriminalized possession of certain marijuana amounts, and thirty-six have legalized marijuana for medicinal purposes.[12] Under the Controlled Substances Act of 1970, marijuana is a Schedule I substance, meaning “it has a high potential for abuse, no currently accepted medical use in treatment in the United States, and a lack of accepted safety for use under medical supervision.”[13] However, many drug policy experts have pointed out that the Controlled Substance Act is “flawed, outdated, and unscientific,”[14] so many legislators have been pushing drug reform to the top of legislative priorities in recent years. For example, in late July of 2021, Senator Charles Schumer, Senator Ron Wyden, and Senator Cory Booker introduced the Cannabis Administration and Opportunity Act in the Senate to effectively lessen the regulation of marijuana.[15] Specifically, this bill was intended to “expunge federal convictions of nonviolent marijuana charges, remove the drug from the Controlled Substances Act, and set up a system to tax marijuana in states that legalize it.”[16] The Cannabis Administration and Opportunity Act would also “empower[] states to implement their own cannabis laws.”[17]

To remedy the mass incarceration of marijuana offenders, and its disproportionate impact on offenders of color, Senator Elizabeth Warren has recently proposed a federal cannabis pardon that, if implemented, would pardon the cannabis convictions of nonviolent offenders, and ultimately expunge their criminal record of such an offense.[18]  Under the Constitution, the President has the power to “grant Reprieves and Pardons for Offenses against the United States.”[19] Except in the cases of impeachment, the Presidential pardon power extends to all federal offenses and may be used at any point after the offense is committed.[20] While the president may use this power to pardon individual offenders, the president can also “issue a general amnesty to a class of people.”[21] Therefore, President Biden, at the federal level, has the authority to pardon marijuana-related offenses without disrupting the Controlled Substances Act.[22]

The efforts of Senator Charles Schumer, Senator Ron Wyden, and Senator Cory Booker in their work on the Cannabis Administration and Opportunity Act undoubtedly illustrate positive progress in the field of drug reform. However, in conjunction with those efforts, Senator Elizabeth Warren’s proposal for a federal cannabis pardon would further rectify the discriminatory actions that were waged against communities of color since the onset of the War on Drugs. In a letter to President Biden, Senator Warren explained a mass cannabis pardon would “mark the beginning of a reversal of decades of ineffective and discriminatory cannabis policies, allowing Americans to return to their communities, find housing and jobs, and rebuild their lives without the burdens of an unjustly imposed criminal record.”[23] Ultimately, the federal cannabis pardon will be a promising proposal to watch in the new year, and if implemented, will bring justice to a system that is intended to provide equality to all.


[1]A History of the Drug War: The Early Stages of Drug Prohibition, Drug Pol’y All., https://drugpolicy.org/issues/brief-history-drug-war (last visited Jan. 11, 2022).

[2] Id.

[3] ACLU, A Tale of Two Countries: Racially Targeted Arrests in the Area of Marijuana Reform 21 (2020), https://www.aclu.org/sites/default/files/field_document/marijuanareport_03232021.pdf.

[4] Kyle Jaeger, Elizabeth Warren Pushes Biden To Do Mass Marijuana Pardons With The ‘Stroke Of A Pen,’ Marijuana Moment (Nov. 19, 2021), https://www.marijuanamoment.net/elizabeth-warren-pushes-biden-to-do-mass-marijuana-pardons-with-the-stroke-of-a-pen/.

[5] A Tale of Two Countries, supra note 3, at 5.

[6] Id.

[7] Id. at 7.

[8] Emily Earlenbaugh, More People Were Arrested for Cannabis Last Year Than For All Violent Crimes Put Together, According to FBI Data, Forbes (Oct. 6, 2020), https://www.forbes.com/sites/emilyearlenbaugh/2020/10/06/more-people-were-arrested-for-cannabis-last-year-than-for-all-violent-crimes-put-together-according-to-fbi-data/?sh=29b1c9be122f.

[9] Id.

[10] A Tale of Two Countries, supra note 3, at 5.

[11] Id.

[12] Lexi Lonas, Warren Presses Biden On Pardons For Nonviolent Cannabis Convictions, The Hill (Nov. 10, 2021, 3:30 PM), https://thehill.com/homenews/senate/580998-warren-presses-biden-on-pardons-for-federal-nonviolent-cannabis-convictions.

[13] Drug Fact Sheet: Marijuana/Cannabis, Dep’t of Just. (Apr. 2020), https://www.dea.gov/sites/default/files/2020-06/Marijuana-Cannabis-2020_0.pdf.

[14] Removing Marijuana From the Schedule of Controlled Substances, Drug All. Pol’y (Jan. 10, 2019), https://drugpolicy.org/resource/removing-marijuana-schedule-controlled-substances.

[15] Lexi Lonas, Senate Democrats Unveiling Push to Legalize Marijuana at Federal Level, The Hill (July 14, 2021, 8:28 AM), https://thehill.com/homenews/senate/562901-top-senate-democrats-unveiling-push-to-legalize-marijuana-at-federal-level.

[16] Id.

[17] Senator Cory Booker et al., Cannabis Administration & Opportunity Act: Discussion Draft 1, https://www.democrats.senate.gov/imo/media/doc/CAOA%20Detailed%20Summary%20-.pdf (last visited Jan. 11, 2021).

[18] Jaeger, supra note 4.

[19] Does the President Have the Power to Legalize Marijuana?, Cong. Rsch. Serv. 3 (Nov. 4, 2021), https://crsreports.congress.gov/product/pdf/LSB/LSB10655.

[20] Id.

[21] Id.

[22] Id.

[23] Elizabeth Warren (@SenWarren), Twitter (Nov. 10, 2021, 6:02 PM), https://twitter.com/SenWarren/status/1458570726944935947/photo/2.

By Katharine Batchelor

On August 20, 2019, the North Carolina House passed its version of Senate Bill 315, the North Carolina Farm Act of 2019, sending it to the North Carolina Senate for a vote.[1] The bill, intended originally to expand the industrial hemp industry in North Carolina, revises the definition of “hemp product” to exclude smokable hemp, effectively banning smokable hemp.[2] That one revision is currently the source of great debate, with the state’s farmers and agriculture industry on one side and law enforcement on the other.[3] Before explaining the significance of this particular controversy, let me take two steps back and explain the root cause of the conflict.

A Quick Background on Hemp Legislation

In 2014, the 113th Congress passed a bill permitting state departments of agriculture to establish pilot programs for growing industrial hemp, if state law allowed.[4] In 2015, the N.C. General Assembly passed Senate Bill 313 which created the Industrial Hemp Commission to oversee the licensing and regulation of hemp farmers.[5] Since the creation of the Commission, industrial hemp production has boomed, with 634 licensed farmers currently growing on over 8000 acres and 3.4 million square feet of greenhouse space, at a time when the state’s farmers need the bump.[6] The declining demand for tobacco and trade issues with China have hurt North Carolina farmers, who currently produce half of all tobacco in the United States.[7] Hemp production has received another boost on a national-level when President Trump signed the 2018 Farm Bill into law, which reclassified hemp products from a controlled substance to an agricultural commodity.[8]

Is the THC less than 0.3%? Hemp v. Marijuana

Taking one more step back, it is important to understand the difference (and the similarities) between hemp and its closely-related cousin, marijuana. Hemp and marijuana are both part of the cannabis plant family, they are simply two different varieties.[9] There are a few types of hemp, one grown predominately for its seeds, another for its fiber, and another for its floral buds from which CBD is extracted.[10] The latter variety is the kind used for smokable hemp and thus where the problem lies. As the North Carolina State Bureau of Investigation (SBI) put it, “This type looks just like marijuana, including the leaves and buds, and it smells the same as marijuana. In fact, there is no way for an individual to tell the difference by looking at the plant; one would need a chemical analysis to tell the difference.”[11] Indeed, the only difference between hemp and marijuana is the amount of tetrahydrocannabinol, or THC, which is the psychoactive chemical in marijuana that produces a high when smoked.[12] Hemp products must contain 0.3% or less THC; anything greater and it is considered illegal.[13] While the N.C. Department of Agriculture utilizes private labs to test for the percentage of THC, the SBI crime lab currently only tests for the presence of THC and not the percentage of THC.[14] Why does that matter? Two words: probable cause.

The Impact of Hemp on Probable Cause

Under existing North Carolina case law, probable cause only requires law enforcement officers to reasonably believe that there is a “probability or substantial chance” of criminal activity.[15] To seize an item, an officer simply has to believe that it is evidence of a crime.[16] The existence of legal, smokable hemp thus creates a huge issue for the way marijuana is currently policed, investigated, and prosecuted.[17] In State v. Fletcher, the North Carolina Court of Appeals upheld a marijuana conviction based on an officer identifying marijuana visually using her experience and training.[18] Now, however, if an officer cannot distinguish on sight between hemp and marijuana, then that officer does not have probable cause to seize evidence or make an arrest, because the cannabis plant material an officer sees or smells could very well be smokable hemp – a legal commodity people are free to use whenever and wherever.[19]

Law enforcement agencies across the state have acknowledged the impact of smokable hemp on marijuana enforcement.[20] In fact, the SBI stated that at least one district attorney’s office has stopped prosecuting marijuana possession because officers can no longer distinguish hemp from marijuana; thus there is no evidentiary grounds for a conviction.[21] Many have even forecasted that the continued legality of smokable hemp could lead to the legalization of marijuana in North Carolina.[22] While there are tests to determine the amount of THC in a substance, there currently is no field test available to North Carolina law enforcement to use on site and again, the SBI currently only tests for the presence of THC.[23] The visual identification evidence by which so many marijuana cases are prosecuted is no longer available to law enforcement and prosecutors.

Senate Bill 315

In response to law enforcement’s concerns, a Senate subcommittee revised SB 315 to ban smokable hemp on June 6.[24] “Hemp product does not include smokable hemp.”[25] That version of the bill passed the Senate on June 18. Almost immediately, the state’s farmers spoke out in protest with the Industrial Hemp Commission calling on the N.C. General Assembly to keep smokable hemp legal.[26] The smokable hemp bud is more lucrative for farmers and many have already invested in new equipment and seed because the state has been loosening hemp laws since 2015.[27] That single revision, which would go in effect on May 1, 2020, could diminish farmers’ ability to obtain the necessary crop insurance and to compete with other states where smokable hemp is legal.[28]

Nevertheless, SB 315 made its way to the N.C. House where representatives went one step further in response to the impact of smokable hemp on probable cause. Before voting to pass the bill as a whole, the House passed the following amendment to the section titled, “Exclusion or suppression of unlawfully obtained evidence:”[29]

(a1) If evidence was obtained as the result of a search that was supported by probable cause at the time of the search, no evidence obtained as a result of that search shall be suppressed solely on the basis of either of the following:
(1) A subsequent determination that a substance believed to be a controlled substance at the time of the search was not a controlled substance.
(2) A subsequent determination that the presence of a controlled substance at the time of the search was not a violation of law.

In essence, the amendment returns probable cause based on visual identification to law enforcement and allows officers to search and arrest for suspected marijuana using sight and smell alone.[30] Furthermore, the amendment explicitly states that even if officers later determine a substance is a legal hemp product, any evidence found through a search can be used as evidence for other charges: the evidence is not fruit of the poisonous tree.[31] This amendment raises significant constitutional questions regarding legal search and seizure, which at least two Republican representatives highlighted before the House voted on the bill.[32]  The bill was sent to the Senate Committee on Rules and Operations on August 22, which has to approve the current edition before it is sent to the governor.[33]

Whether the current edition[34] of the bill is signed into law remains to be seen. With two of the state’s most influential groups, law enforcement and farmers, on opposing sides, it’s likely that this debate isn’t over quite yet, and SB 315 could evolve once again before it passes into the hands of Roy Cooper.


[1] Dawn Baumgartner Vaughan, NC House Votes for Ban on Smokable Hemp, Reacting to Police Concern Over Pot Arrests, Charlotte Observer (Aug. 21, 2019, 12:12 PM), https://www.charlotteobserver.com/news/politics-government/article234178387.html (quoting Fen Rascoe, a North Carolina Industrial Hemp Commission member and hemp farmer).

[2] S.B. 315 – 10th Ed., Gen. Assemb., 2019 Sess. (N.C. 2019), https://www.ncleg.gov/Sessions/2019/Bills/Senate/PDF/S315v10.pdf.

[3] Vaughan, supra note 1.

[4] Industrial Hemp Pilot Program in North Carolina, N. C. Dep’t of Agric. & Consumer Serv., https://www.ncagr.gov/hemp/index.htm (last visited Sept. 19, 2019).

[5] S.B. 313, Gen. Assemb., 2015 Sess. (N.C. 2015), https://www.ncleg.net/Sessions/2015/Bills/Senate/PDF/S313v5.pdf.

[6]  Matthew Burns, NC Sees Hemp as Next Big Cash Crop, WRAL (Mar. 20, 2019), https://www.wral.com/nc-sees-hemp-as-next-big-cash-crop/18273125/.

[7] Heather Wilkerson, North Carolina Farmers Embrace Hemp as the Market for Tobacco Dwindles, Green Entrepreneur (June 11, 2019), https://www.greenentrepreneur.com/article/334739; Will Doran, NC Lawmakers See Hemp as the State’s Next Big Cash Crop. But Police are Opposed., Raleigh News & Observer (June 11, 2019, 8:19 PM), https://www.newsobserver.com/news/politics-government/article231439078.html.

[8] John Hudak, The Farm Bill, Hemp Legalization and the Status of CBD: An Explainer, Brookings (Dec. 14, 2018), https://www.brookings.edu/blog/fixgov/2018/12/14/the-farm-bill-hemp-and-cbd-explainer/.

[9] Industrial Hemp Pilot Program in North Carolina: Frequently Asked Questions, N. C. Dep’t of Agric. & Consumer Serv., https://www.ncagr.gov/hemp/FAQs.htm (last visited Sept. 19, 2019).

[10] Id.

[11] N.C. State Bureau of Investigation, Memo on Industrial Hemp/CBD Issues (May 2019), https://www.sog.unc.edu/sites/www.sog.unc.edu/files/doc_warehouse/NC%20SBI%20-%20Issues%20with%20Hemp%20and%20CBD%20Full.pdf.

[12] Id.

[13] Id.

[14] Id.

[15] State v. Riggs, 328 N.C. 213, 219 (1991).

[16] N.C. State Bureau of Investigation, supra note 11.

[17] Paul A. Specht, Some NC Lawmakers Want to Ban Smokable Hemp. It Looks Too Much Like Marijuana, They Say., Charlotte Observer (July 23, 2019, 7:36 PM), https://www.charlotteobserver.com/news/politics-government/article233012142.html.

[18] State v. Fletcher, 92 N.C. App. 50, 56 (N.C. Ct. App. 1988).

[19] Phil Dixon, Hemp or Marijuana?, U.N.C. Sch. of Gov’t: N.C. Crim. Law (May 21, 2019, 10:14 AM), https://nccriminallaw.sog.unc.edu/hemp-or-marijuana/.

[20] Specht, supra note 17.

[21] N.C. State Bureau of Investigation, supra note 11.

[22] Specht, supra note 17.

[23] N.C. State Bureau of Investigation, supra note 11.

[24] N.C. Senate Comm. on Agric./Env’t/Nat. Resources, PCS 15357 (2019) https://webservices.ncleg.net/ViewBillDocument/2019/4790/0/S315-PCS15357-TQf-5.

[25] Id.

[26] Specht, supra note 17.

[27] Id.

[28] Id.

[29] N.C. House, Amendment A1 to S.B. 315 (2019)  https://webservices.ncleg.net/ViewBillDocument/2019/6292/0/S315-ASA-85-V-1.

[30] Vaughan, supra note 1.

[31] Id.

[32] Id.

[33] Id.

[34] S.B. 315 – 10th Ed., Gen. Assemb., 2019 Sess. (N.C. 2019), https://www.ncleg.gov/Sessions/2019/Bills/Senate/PDF/S315v10.pdf.

8 Wake Forest L. Rev. Online 35

Cara Katrinak*

I. Introduction

The marijuana industry is growing like a weed. While recreational marijuana usage remains illegal under federal law, the recent trend towards legalization of the drug at the state level has enticed entrepreneurs and investors to enter the emerging marijuana market.[1] In 2016, Privateer Holdings announced that it was the first company in the space to raise $100 million dollars,[2] and, according to recent estimates, the legal marijuana market in the United States is expected to reach $20.6 billion in annual revenue by 2020, increasing the amount by 300 percent from 2015.[3]

Pioneers in the marijuana industry face many of the same business challenges posed by any other market, including securing financing and protecting assets, such as intellectual property.[4] However, marijuana start-ups must overcome the additional hurdle of the drug’s classification as an illegal substance under federal law.[5]

II. The Value of Trademarks in the Emerging Marijuana Market

Trademark law protects source identifiers, which help consumers differentiate between products, and prevents unfair competition by barring competitors from palming off on another’s goodwill.[6] While the United States has historically recognized common law trademark rights,[7] the Lanham Act, passed in 1946, is the modern basis for federal trademark protection.[8] Unlike other forms of intellectual property, whose legislation was passed pursuant to the “intellectual property” clause in Article I, Section 8, Clause 8 of the Constitution, Congress passed the Lanham Act pursuant to the Commerce Clause of that same section.[9] Accordingly, trademark rights are not bound by the restrictions of the intellectual property clause, which permits Congress to grant individuals an “exclusive right” for only “limited times.”[10] Because the Lanham Act theoretically allows for owners’ rights to remain exclusive forever,[11] trademark rights are a highly valuable type of intellectual property in any industry.[12]

The Lanham Act’s primary method for trademark protection is registration.[13] While not every mark will satisfy the Act’s criteria for registration, those who want full protection should seek registration.[14] For example, the Act requires that a registered mark be distinctive or have acquired distinctiveness.[15] The United States Patent and Trademark Office (“USPTO”) assesses a mark’s acquired distinctiveness by considering the mark’s use in commerce.[16] Therefore, the more crowded that a given market is, the more important that a mark be distinctive enough to be registrable and valuable (and vice versa).

While still in its early stages, the marijuana market is already highly competitive.[17] Like the beer and liquor market, the products being sold in the marijuana market are essentially the same.[18] Therefore, marijuana brands may want to focus advertising on a lifestyle or attitude instead of a product’s unique benefits, a strategy used by beer and liquor brands.[19] In terms of product differentiation, a strong, distinctive trademark will be incredibly important for the success of a marijuana brand. However, a mark that cannot be protected loses much of its value.[20] Because the marijuana market, which has been compared to the “Wild West,”[21] remains in flux with significant open legal questions,[22] emerging marijuana entrepreneurs should seek the strongest trademark protection possible.

III. Authority for Trademark Protection

Trademark rights are protectable under common law, state statutory law, and federal law via the Lanham Act. Accordingly, marijuana brands have a variety of legal sources through which to acquire and protect their trademark rights. However, federal protection via the Lanham Act is the most powerful source of trademark protection.[23] Unlike state and common law protection, which is limited in its geographic reach, federal protection encompasses the entire United States. Federal protection also enables registered mark holders to pursue a wider variety of remedies if their trademark rights are infringed, such as the ability to pursue a counterfeiting claim.[24] As a result, federal registration of a trademark will likely deter challengers to a mark from engaging in costly litigation.[25] Similarly, federal protection through mark registration lends a higher level of legal heft to demand letters, thus likely making them more effective.[26] Therefore, ideally, marijuana entrepreneurs would want to obtain federal protection through trademark registration if possible.

IV. Challenges Associated with Trademarks in the Marijuana Market

Marijuana brands seeking federal trademark registration face several challenges, the most obvious of which is that marijuana remains illegal under federal law.[27] Despite the trend towards legalization of marijuana at the state level, for federal trademark purposes, the trend has been moving in the opposite direction.[28] Marijuana-related trademarks generally come in three varieties: those for use in distribution with marijuana, those for products that have a use that may be related to marijuana, and those that may simply have a tangential or symbolic tie to marijuana and not a physical connection with actual use (for example, t-shirts featuring marijuana leaves).[29]

According to long-standing rule, a mark can be registered under the Lanham Act only for lawful purposes.[30] The United States Patent and Trademark Office’s test for lawful use for marijuana trademarks is whether the goods comply with the Controlled Substances Act (“CSA”).[31] Currently, any connection to distribution of the drug is an absolute bar to registration. [32]

In keeping with the lawful use rule, the goods for which an applicant seeks to register a mark must have a lawful use under federal law.[33] The lawful use rule derives from two statutory provisions: sections 1051 and 1052 of the Lanham Act.[34] Section 1051(a)(1) provides that “[t]he owner of a trademark used in commerce may request registration of its trademark on the principal register.”[35] Section 1051(b) allows applicants to seek registration for marks for which they have a “bona fide intention to use the mark in commerce.”[36] The other relevant provision, section 1052(d), bars a mark from federal registration when it is likely to cause confusion with another mark that would have “concurrent lawful use in commerce.”[37] Section 1127 defines the word “commerce” as “all commerce which may lawfully be regulated by Congress.”[38] In 1965, 37 C.F.R. section 2.69 was promulgated on the basis of section 1127.[39] The rule says that “[w]hen the sale or transportation of any product for which registration of a trademark is sought is regulated under an Act of Congress, the [USPTO] may make appropriate inquiry as to compliance with such Act for the sole purpose of determining lawfulness of the commerce recited in the application.”[40]

A. The TTAB’s View of Lawful Use

Following the rule’s promulgation, a line of Trademark Trial and Appeal Board (“TTAB”) decisions interpreted the Lanham Act to mean that “use in commerce” in section 1051 is only “lawful use in commerce,” meaning that the item’s use must not be unlawful under controlling federal law.[41] In In re Stellar in 1968, the TTAB upheld the USPTO’s refusal to register a mark for a breath freshener on the basis that the application failed to list the product’s net contents, a requirement of the Federal Food, Drug and Cosmetic Act.[42] Since the statutory provision at issue was section 1051 and not section 1052, this was arguably inferring an additional word, “lawful,” into the statute.[43]

The Board offered two arguably slim justifications for its decision.[44] First, the Board reasoned that “no trademark rights can accrue” from “unlawful shipments,” thus requiring a showing of use “which may lawfully be regulated by Congress.”[45] This oddly seems to imply that there exists some unlawful behavior which Congress cannot lawfully regulate.[46] Second, the Board stated that to hold otherwise was to put the “Patent Office in the anomalous position of accepting” federal registration on the basis of a use against which a statute specifically regulates.[47] In 1981, the TTAB seemed tempted to reverse course, acknowledging a “very persuasive argument” that there is no statutory basis for refusing registration because of “unlawful use.”[48] Regardless, Stellar is still controlling.[49]

B. The Federal Court’s View of Lawful Use

Federal courts, too, have embraced the TTAB view of lawful use. In Gray v. Daffy Dan’s Bargaintown in 1987, the Federal Circuit broadly stated that “[a] valid application cannot be filed at all for registration of a mark without ‘lawful use in commerce.’”[50] This would seem to apply to both sections 1051 and 1052.[51] However, the matter directly before the court was use in commerce under section 1052(d) for concurrent use purposes.[52] Some scholars have argued that “lawful use” in section 1052 should mean “good faith use.”[53] Further, principles of statutory construction suggest that the requirement was intended for section 1052 but not section 1051, given that section 1052 contains the word “lawful” and section 1051 does not.[54]

In 2000, the U.S. Court of Appeals for the Tenth Circuit cited Daffy Dan’s for the rule that the unlawful shipping of goods cannot establish use in commerce for trademark protections.[55] The court did not apply the rule, however, since unlawful use was not alleged.[56] In CreAgri v. USANA Health Services in 2007, the Ninth Circuit also adopted the Daffy Dan’s rule for two reasons.[57] First, the court reasoned, Congress would likely not have intended to extend benefits to a party who violated other federal laws.[58] Second, holding otherwise would incentivize people to rush to market without due concern for complying with relevant federal law.[59] Aside from the Ninth and Tenth Circuits, only a few federal courts have ruled on the lawful use requirement.[60]

C. The USPTO’s View of Lawful Use

Prior to 2009, the USPTO’s view of marijuana with respect to lawful use was arguably more liberal, but certainly not the absolute bar it currently represents.[61] It was not until 2009 that the office received a significant number of marijuana mark applications.[62] In a temporary step toward liberalization, in April of 2010, the USPTO announced a new category of trademarks for medical marijuana.[63] However, after criticism, the USPTO withdrew the category and called its announcement a “mistake.”[64]

In October of 2011, the USPTO explicitly instituted its own restrictive marijuana policy when it revised section 907 of the Trademark Manual of Examining Procedure to explicitly address marijuana.[65] Effectively adopting section 2.69 as the USPTO’s test, the revision reads:

[E]vidence indicating that the identified goods or services involve the sale or transportation of a controlled substance or drug paraphernalia in violation of the Controlled Substances Act (“CSA”), 21 U.S.C. §§801-971, would be a basis for issuing an inquiry or refusal. Subject to certain limited statutory exceptions, the CSA makes it unlawful to manufacture, distribute, or dispense a controlled substance; possess a Schedule I controlled substance; or sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia. Note that, regardless of state law, marijuana and its psychoactive component, THC, remain Schedule I controlled substances under federal law and are subject to the CSA’s prohibitions.[66]

The revision led the office to reject numerous marijuana applications that had previously been pending (and thus were not poised for immediate rejection).[67] Since 2011, connections to distribution of marijuana have remained an absolute bar.[68]

D. The Spectrum of Lawful Use

Despite this “absolute bar,” though, marijuana-related trademarks appear to exist on a spectrum of lawful use where the outer bounds are clearly defined but the middle ground is not. While any connection to the distribution of marijuana is an absolute bar,[69] marks with only symbolic connections to the drug and no connection to its actual use or distribution are registrable.[70] The success of applications for marks falling somewhere in the middle of this spectrum, such as an item that may be used to consume marijuana and may be evocative of the drug (such as a vaporizer that can be used for other legal products, like tobacco), depends on how the applicant crafts the registration application.[71] The application, however, must comport with the applicant’s honest knowledge of and intent for the product’s use.[72]

The USPTO takes a broad view of distribution, barring marks for products that contain cannabis, as well as those for marketplaces where cannabis-containing products are sold.[73] In 2016, the USPTO rejected the mark “Herbal Access” for use with a retail store when the application did not mention marijuana, but the applicant was a Washington state marijuana dispensary.[74] In 2014, the USPTO rejected the mark “KUSH EXPO” for use with “seminars, exhibitions and trade shows in the field of medical marijuana,” because the application identified the mark as being used in connection with a place where marijuana would be consumed or traded.[75] Therefore, if a mark owner wants federal protection for anything marijuana-related, it should not be involved in retail distribution at all.

In In re JuJu Joints, the TTAB took a hard line against registering any mark that has any explicitly stated connection to actual consumption of marijuana on the grounds that it does not constitute lawful use in commerce.[76] Applicant JuJu Joints had acknowledged that the vaporizing device for which it sought to register a mark was “marijuana-related” and “optimized” for such use.[77] The TTAB upheld the refusal to register the mark on the basis that the device was “primarily intended or designed for use in ingesting, inhaling, or otherwise introducing cannabis or marijuana into the human body.”[78] As such, the board concluded, that the vaporizing device “constitutes unlawful drug paraphernalia under the CSA.”[79] The applicant made numerous arguments in its favor, including the following: (1) that its device should be treated like those intended for tobacco products, (2) that the company marketed its device in states where marijuana is legal, (3) that its goods should be considered lawful under the Cole Memo[80] and (4) because marijuana has “‘accepted medical uses.’”[81] The court rejected the latter three of these arguments on the basis that they were irrelevant to marijuana’s continued status as a Schedule 1 drug under the CSA.[82]

The board also rejected the idea that JuJu Joints’ vaporizer should be evaluated like an e-cigarette because “each application must be considered on its own record to determine eligibility to register.”[83] This is crucial because the examining attorney will typically presume an applicant’s goods have a lawful use in commerce.[84] The board cited the Federal Circuit in In re Nett Designs, Inc. for the proposition that even if prior registrations had similar characteristics, the USPTO’s registration of those marks does not bind the TTAB.[85] Therefore, even if JuJu Joints had achieved registration, it would offer little certainty to future applicants on its own.

After the TTAB’s decision in JuJu Joints, an applicant has three potential choices for marks that may be related to marijuana usage. First, it may try the same route as JuJu Joints, expressing an explicit connection to the drug, and face almost certain rejection. Second, it may avoid connections to marijuana, but only if it can do this honestly and knowingly. Ideally, the applicant would want to expressly disavow connections to marijuana.[86] Third, it may back away from federal registration, either abandoning any pending application or choose not to register a trademark with the USPTO in the first place.[87]

V. Conclusion

The marijuana industry is a rapidly expanding business. Accordingly, brands looking to protect their trademark rights in marijuana products need to adhere to the current legal framework, while also anticipating how the legal landscape will change as the marijuana market continues to grow.


* Cara Katrinak is a third-year law student at the Wake Forest University School of Law. She received a bachelor’s degree in Art and Art History from the College of William and Mary. Snoop Dogg’s cannabis brand, Leafs by Snoop, sparked her interest in the expanding marijuana market and its relationship with intellectual property law.

  1. Jack Healy & Kirk Johnson, Next Gold Rush: Legal Marijuana Feeds Entrepreneurs’ Dreams, N.Y. Times (July 28, 2014), https://www.nytimes.com/2014/07/19/us/new-gold-rush-legal-marijuana-feeds-entrepreneurs-dreams.html.
  2. Its holdings include the Marley Natural cannabis brand using the licensed name of musician Bob Marley and Leafly, an online service described as the Yelp for marijuana. Tom Huddleston, Private Equity Fund Raises $100 Million for Cannabis Startups, Fortune (Nov. 4, 2016), http://fortune.com/2016/11/04/privateer-cannabis-marijuana/.
  3. Melia Robinson, The Legal Marijuana Industry Could Explode by 2020, Bus. Insider (Sept. 23, 2016, 2:31 PM), http://www.businessinsider.com/legal-marijuana-market-revenue-2016-9.
  4. Gretchen L. Temeles et al., IP Protection and the Cannabis Industry: Strategies and Trends, Law.com: The Legal Intelligencer (Apr. 2, 2018, 2:10 PM), https://www.law.com/thelegalintelligencer/2018/04/02/ip-protection-and-the-cannabis-industry-strategies-and-trends/.
  5. Kieran G. Doyle, Commentary, Trademark Strategies for Emerging Marijuana Businesses, 21 Westlaw J. Intell. Prop. 1, 4 (2014).
  6. Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 163–164 (1995).
  7. Blake W. Jackson, Note, Notorious: The Treatment of Famous Trademarks in America and How Protection Can Be Ensured, 3 J. Bus. Entrepreneurship & L. 61, 79 (2009).
  8. Id. at 80.
  9. Id. at 79.
  10. U.S. Const. art. I, § 8, cl. 8; Trademark, Patent, or Copyright?, U.S. Patent & Trademark Office, https://www.uspto.gov/trademarks-getting-started/trademark-basics/trademark-patent-or-copyright.
  11. The Act, however, requires renewal of registered marks every ten years. 15 U.S.C. § 1058(a) (2012). See also U.S. Patent & Trademark Office, supra note 10.
  12. Doyle, supra note 5, at 3.
  13. Id.
  14. Sean K. Clancy, Branded Bud or Generic Ganja? Trademarks for Marijuana in Washington, 18 Lewis & Clark L. Rev. 1063, 1085 (2015).
  15. Id.
  16. 15 U.S.C. § 1052(f) (2012).
  17. Sean Williams, Legal Marijuana Prices Are Plunging in Colorado, but Not for the Reason You’d Expect, Motley Fool (Sept. 11, 2016, 9:07 AM), https://www.fool.com/investing/2016/09/11/legal-marijuana-prices-are-plunging-in-colorado-bu.aspx.
  18. Beer Marketing and Differentiation, Stealing Share, https://www.stealingshare.com/pages/beer-marketing/ (last visited Dec. 1, 2017).
  19. Vauhini Vara, The Art of Marketing Marijuana, The Atlantic (Apr. 2016), https://www.theatlantic.com/magazine/archive/2016/04/the-art-of-marketing-marijuana/471507/.
  20. See In re Tam, 808 F.3d 1321, 1340 (Fed. Cir. 2015) (“And while it is true that a trademark owner may use its mark in commerce even without federal registration, it has been widely recognized that federal trademark registration bestows truly significant and financially valuable benefits upon markholders.”).
  21. Olga Khazan, Laid-Back Hawaii’s Strict Approach to Marijuana, The Atlantic (Nov. 3, 2017) https://www.theatlantic.com/health/archive/2017/11/
    hawaii-marijuana/544880/.
  22. Doyle, supra note 5, at 3.
  23. Id.
  24. Id.
  25. Id.
  26. Id.
  27. Id.
  28. Christopher R. McElwain, High Stakes: Marijuana and the USPTO’s “[Lawful] Use” Registration Criterion 8 (2016), http://www.inta.org/Academics/Documents/2016/McElwain.pdf.
  29. Id. at 3–7.
  30. Doyle, supra note 5, at 3.
  31. Id. at 1.
  32. See McElwain, supra note 28, at 14; see also In re Morgan Brown, 119 U.S.P.Q.2d 1350 (T.T.A.B. 2016) (“We have consistently held that, to qualify for a federal service mark registration, the use of a mark in commerce must be ‘lawful.’”).
  33. McElwain, supra note 28, at 2.
  34. See id.
  35. 15 U.S.C. § 1051(a)(1) (2012).
  36. Id. § 1051(b).
  37. Id. § 1052(d).
  38. Id. § 1127.
  39. McElwain, supra note 28, at 8–9.
  40. 37 C.F.R. § 2.69.
  41. McElwain, supra note 28, at 9.
  42. Stellar Int’l, Inc., 159 U.S.P.Q. (BNA) 48, 52 (T.T.A.B. 1968).
  43. McElwain, supra note 28, at 9–10.
  44. Id. at 10.
  45. Stellar, 159 U.S.P.Q. (BNA) at 50.
  46. McElwain, supra note 28, at 10.
  47. Stellar, 159 U.S.P.Q. (BNA) at 51.
  48. McElwain, supra note 28, at 21 n.151.
  49. Id. at 10.
  50. Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526 (Fed. Cir. 1987).
  51. See McElwain, supra note 28, at 10–11.
  52. Id. at 11.
  53. Id.
  54. Id.
  55. See United Phosphorus, Ltd. v. Midland Fumigant, Inc., 205 F.3d 1219, 1225 (10th Cir. 2000).
  56. McElwain, supra note 28, at 11.
  57. See id.
  58. CreAgri, Inc. v. USANA Health Scis., Inc., 474 F.3d 626, 630 (9th Cir. 2007).
  59. Id.
  60. See McElwain, supra note 28, at 12.
  61. The oldest registration for marijuana in the USPTO’s Trademark Status & Document Retrieval System was for a drug in the form of cannabis extract registered in 1931. With two marijuana applications from the early 2000s, the USPTO sought more information instead of outright refusing registration. Id. at 4, 7–8.
  62. Id. at 5.
  63. Id.
  64. Id.
  65. Id. at 8.
  66. U.S. Patent & Trademark Office, 8-900 Trademark Manual of Examining Procedure (TMEP) 907 (2017).
  67. McElwain, supra note 28, at 8.
  68. Id.
  69. Id.
  70. See id. at 6.
  71. See generally Christiane Schuman Campbell, USA: Mark-ijuana: Trademarks and Branding Cannabis Products, Lexology (Apr. 18, 2017), https://www.lexology.com/library/detail.aspx?g=f7045fa0-0527-47b8-82a0-3ad4d3f8e57a.
  72. Lying to the USPTO could invalidate the applicant’s mark and constitute fraud. Danielle Scott Grant-Keane, The Unattainable High of the Marijuana Industry, 90 Wis. Law. 14, 18 (2017).
  73. See McElwain, supra note 28, at 7, 14.
  74. In re Morgan Brown, 119 U.S.P.Q.2d 1350 (BNA) (T.T.A.B. 2016).
  75. McElwain, supra note 28, at 14.
  76. In re JJ206, LLC, DBA JuJu Joints, 120 U.S.P.Q.2d 1568, 1569 (T.T.A.B. 2016).
  77. Id.
  78. Id.
  79. Id.
  80. The Justice Department issued two memos, in 2009 and 2013 (the Cole Memo), that directed federal prosecutors to deemphasize enforcement of marijuana use. Brady Dennis, Obama Administration Will Not Block State Marijuana Laws if Distribution is Regulated, Wash. Post (Aug. 29, 2013), https://www.washingtonpost.com/national/health-science/obama-administration-will-not-preempt-state-marijuana-laws—for-now/2013/08/29/b725bfd8-10bd-11e3-8cdd-bcdc09410972_story.html.
  81. In re JJ206, LLC, 120 U.S.P.Q.2d (BNA) at 1569.
  82. Id.
  83. Id.
  84. Grant-Keane, supra note 72, at 18.
  85. In re JJ206, LLC, 120 U.S.P.Q.2d (BNA) at 1569.
  86. See Campbell, supra note 71 (discussing Humboldt Apothecary, a class 5 registration for “herbs and ingredients that are lawful pursuant to the CSA . . . none of which are cannabis . . . [or] comprise[] of marijuana”).
  87. This may be the strategy at play with Firefly Vapor, which has been called the “iPhone of vaporizers” and does not appear to have a registration or a pending application. Melia Robinson, A Former Apple Designer Has Created the iPhone of Vaporizers, Bus. Insider (May 25, 2016, 11:47 AM), http://www.businessinsider.com/firefly-2-vape-design-2016-5.