Cannabis Trademarks: Is the Lawful Use Requirement Even Lawful?

Home | Canna Law Blog | Cannabis Trademarks: Is the Lawful Use Requirement Even Lawful? Is the lawful use requirement for trademarks lawful? In a recent Vanderbilt Law Review article, Robert A. Mikos compellingly argues that it is not. The article is a must-read for anyone interested in the topic of cannabis trademarks, but highlights a problem that goes far beyond cannabis, and indeed trademark law. For those unfamiliar with the the lawful use requirement, it requires that "use of a mark in commerce must be lawful under federal law to be the basis for federal registration under the U.S. Trademark Act [Lanham Act]." USPTO has consistently relied on the requirement to deny applications to register trademarks that describe cannabis products that are unlawful under the Controlled Substances Act or the Federal Food, Drug, and Cosmetic Act. At one level, the lawful use requirement makes sense. Surely no one wants drug cartels and mafia families registering their trademarks with the USPTO. However, the lawful use requirement does not only limit the activities of criminal organizations. In his article, Prof. Mikos cites one trademark application that was denied because, according to USPTO, the mark's use in commerce was on cigars from Cuba, prohibited by the Cuban Assets Control Regulations. The "breathtaking array of laws outside the filed of trademark law" that USPTO has had to consider over the years includes the Amateur Sports Act and the Federal Indian Arts and Crafts Act. At a conceptual level, this attention to non-trademark laws seems ill-placed, but the problem is far more serious. The "suggestion that the sale or transportation of goods must comport with other laws" is, as Prof. Mikos explains, "notably absent from the text of the Lanham Act. "By imposing and enforcing the lawful use requirement, USPTO is ignoring "limits on its authority to refuse registration for any reason not expressly enumerated in the [Lanham Act]." Interpreting a statute in a way that ignores its plain language is deeply problematic. Unfortunately, what happens with the lawful use requirement is not an isolated case, as any practitioner who works with government agencies knows. As a consular officer tasked with enforcing U.S. immigration and nationality law (and later as an attorney practicing immigration law), I saw plenty of ad hoc "rulemaking," even by junior officers, and in some cases in fragrant violation of the Constitution. The enforcement of the lawful use requirement does not, in general, rise to that egregious level. But it is still, as Prof. Mikos describes it, an "unauthorized and unwise" practice, which has unduly inflicted harm on scores of cannabis brands and the public, as we have explained in these pages. The USPTO is currently struggling to keep up with its workload, which has greatly picked up as the post-COVID realities of telework and greater reliance on e-commerce are reflected in business activity. This is a perfect time for the agency to revisit the Lanham Act and shed a mission it was never tasked with in the first place. Check Out Our Cannabis Law Services Share Twitter Facebook LinkedIn E-mail Comment Fred Rocafort Fred leads Harris Sliwoski’s intellectual property practice and is the coordinator of the firm’s international team. Much of Fred’s practice consists of helping cannabis businesses protect their brands. He also works with entrepreneurs and companies entering the Web3 space, a new frontier for IP law. Prior to joining Harris Sliwoski, Fred worked overseas for more than a decade, in both government and private sector roles. Fred is a regular contributor to the award-winning China Law Blog and Canna Law Blog. Fred began his career overseas as a U.S. consular officer in Guangzhou, China, where he advocated for fairer treatment of American companies and citizens in China and for stronger intellectual property rights enforcement. After entering the private sector, Fred worked at a Shanghai law firm as a foreign legal advisor and later joined one of the oldest American law firms in China, helping foreign companies navigate the Chinese legal environment. He also led the legal team at a Hong Kong-based brand protection consultancy, spending most of his time out in the field, protecting clients against counterfeiters and fraudsters in Greater China, Southeast Asia and Latin America. In addition to his IP work, as a native Spanish speaker, Fred works closely with different Harris Sliwoski teams on Latin America and Spain matters. Fred also provides advice to cannabis industry participants and other businesses on import and export transactions. Fred is an ardent supporter of FC Barcelona—and would be even in the absence of Catalan forebears who immigrated to Puerto Rico in the mid-1800s. 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