Tag Archives: law student

State Registered Cannabis Trademarks: (An) Amoral Dilemma

I called my mother the other day. I figured that, as an adult, it was time we had the talk; I asked her what she thought a trademark was. “It means,” she said, “that nobody else can use the same thing.” Sure, but why would we have laws about that? “Because… oh I don’t know, because somebody cares.” After some discussion, it became clear that my mother had both a normal level of interest in Intellectual Property law and held a common misconception. My mother was under the impression that trademark law is for the benefit of corporations.

Because our government is “for the people,” it follows naturally that trademarks are also for the people. In a previous post I wrote that the government grants exclusive rights if some important public good is served. The exclusive use of a mark is not protected for the sake of business but for the sake of the consumer. This information is invaluable to consumers because it allows us to choose between spending our dollars on local, sustainable, organic, humane farmers and butchers and more affordable alternatives with a glance at a package. Thus, when you go out and purchase some first-rate dance gear the branding lets you know the source. When you’re stuck in the middle of Nowhere, Oklahoma, you can rest assured that your can with the familiar Coca-Cola trademark is still a Coke™ because of trademark law.

A corporation can build goodwill and leverage its reputation to add value to its products. If a consumer knows nothing about watches, it’s possible they may be led to believe a Rolex is a good watch because of Rolex’s reputation. While trademarks may serve a corporation’s financial interest, keep in mind that a bad reputation is equally protected. What we, the people, get out of enforcing marks is clear identification of the source of goods. The quality of that source, or its “branding,” is not part of the deal. There are a number of reasons that the USPTO might deny a trademark, but the “morality clause” is most pertinent to marks related to cannabis.

The Lanham Act, the federal level statutory scheme for trademarks, has a “morality clause.”  In the language of section 1052(a), any mark that is “immoral, deceptive, or scandalous matter” can be denied registration. A deceptive mark clearly undermines the goal of keeping the consumer properly informed as to source. This means marks that misrepresent not only the company name but also geographic source, material composition, or sponsorship of some individual, etc. would be considered deceptive and denied registration.

When it comes to scandalous material, an examiner might “know it” simply when they “see it,” in the manner of Justice Stewart’s famous intuitive approach. A morality judgment is treacherous territory, doubly so with the weight of law behind it. It is no surprise that courts have, as the trademark manual of examining procedure puts it, “included immoral matter in the same category as scandalous matter.” Inevitably, scandalousness and immorality judgments will lead to disagreement, and such a subjective standard is not, in my opinion, useful legislative drafting. Retooling the language is probably best, but that is a legislative prerogative, not the purview of lawyers or courts. For a thorough examination of scandalousness and the caprice of the USPTO, I recommend an excellent (and often amusing) journal article by Anne Gilson LaLonde and Jerome Gilson (for those in the know, yes, those Gilsons). Generally, drug-related marks are denied for scandalousness because of the promotion or association with illegal substances under the Controlled Substances Act. There are some cases, like Cocaine Anonymous (note the circled R indicating a registered mark – not “™” which is for unregistered marks) or Marijuana Symposium, where the context specific use is considered within the gamut of federal drug policy. There are ways around USPTO difficulties with trademarking cannabis products, but I think the apparent contradictions in whether a mark is granted or not can be resolved in a different way, without upsetting the status quo.

See, you can also register a trademark at the state level. The Lanham Act, as mentioned, is the federal scheme. Each state has its own version of the Lanham Act that will give statewide trademark protection. Given the patchwork legal status of cannabis in the United States, a state-by-state approach makes a lot of sense. Unfortunately, the statutory language of 47 of those states replicates the morality clause from the Lanham Act verbatim (for a full list check out footnote 3 in the Gilson article). It’s easier to list the outlying states Colorado, Maine, and Wisconsin — than the majority. Of these, Maine comes the closest to a morality clause, denying any mark that “[c]onsists of or comprises language that is obscene, contemptuous, profane or prejudicial… [or i]nappropriately promotes abusive or unlawful activity” (emphasis added). Setting aside Maine’s oddly detailed trademark legislation on potatoes, oils, and sardines, could a mark for a company whose product is cannabis be an “appropriate” promotion of a federally unlawful activity? I think so.

In a state with a morality clause in its trademark statute (like California), is it scandalous to identify a good that is legal in that state but remains illegal under federal law? My answer looks to the late, great, Judge Traynor. In one of his more famous opinions, Reich v. Purcell, Judge Traynor discusses how the “forum must search to find the proper law to apply based upon the interests of the litigants and the involved states.” Judge Traynor was deciding a conflict of laws problem in torts, but his reasoning can be applied here. More succinctly, scandalousness and morality rejections should be based on the weighed interests of the state and federal governments, not a subjective interpretation of those words as applied to a “substantial composite of the general public.”

In a state where cannabis is totally decriminalized, regulated by the state or where the state participates in the market, the public view about offensiveness of a mark is difficult to ascertain.  While some groups will surely find no moral/scandal objection to cannabis marks, other groups may find cannabis use scandalous but consider regulation a better solution than outright prohibition.  Additionally, the minority may still prefer prohibition and retain scandalousness objections to any cannabis related mark. While scandalousness objections to trademark registration perhaps cannot be resolved, there remain amoral public interest considerations.  A given state’s interests and the effects of granting a trademark in that state should be weighed against the interest of the federal government, especially noting that whole supremacy thing. If a state grants cannabis trademarks and, by extension, allows for companies to potentially build goodwill and brand loyalty, will that promote the use of cannabis?  Will branding push companies to cultivate a more positive reputation through higher quality products, or safer products and safer use environments?

Further, while the public’s subjective reasoning cannot be ascertained, the codified policy (in this hypothetical) would be one that does not criminalize cannabis. Examiners and their supervisors could decide trademark eligibility by looking to established interests instead of subjective review of “scandal.” Admittedly, changing from “scandal” to “public interest” analysis sounds like jumping out of the bog and into the mire. I think that however scandalized someone feels (or doesn’t) about the Redskins trademark, he or she can concede that our public interest has long proscribed racism, prioritized eliminating discrimination, and promoted equality. Revoking the Redskins trademark arguably serves those ends. This approach also clears up how the USPTO ultimately granted a trademark to an apparently scandalous mark. An image that may scandalize the public by depicting our nation’s flag as a condom was acceptable because of the goal of characterizing the fight against AIDS as patriotic.

Luckily, the interests of the federal government have been clearly set forth in the somewhat notorious Cole memo. The eight priorities listed in that memo can easily be satisfied while serving state interests. A state can serve its own decriminalization regime without subverting these priorities, which explains how a mark can be “scandalous” on a federal level but not in a particular state. Further, the federal government has an interest in allowing states to establish their own unique priorities and policies. This “laboratory of democracy” that respects the individualized needs of specific regions is part of why we have a federal system in the first place. The real question then becomes whether granting trademarks serves a given state’s interest.

Among many details I have glossed over, there is a third option for trademarking: simple use of a mark in commerce grants common law protections without any registration at all, state or federal. This protection is limited to the geographic region of use and depends on common law, which varies by state. California is geographically large and if the consumer is to develop some sense of cannabis products, simple common law protection is assumed not to suffice because a northern California company could use the same mark as a company elsewhere in the state and potentially confuse consumers in between, especially if the market expands rapidly, as it has in Colorado.

If a company cannot build goodwill with its brand it can only really market objectively measurable characteristics like potency and price, not quality. Research indicates that price increases discourage kids from using cannabis more than adults. Granting trademarks would allow corporations to more fully leverage their brand, which would increase pricing of their products – and might decrease potential youth possession and use (which would assuredly remain illegal, just as it is for tobacco or alcohol). There are, of course, risks associated with allowing marks that may be targeted at or appealing to children. An interest analysis supports denial of those types of marks as well, since protecting children is an established interest of both the states and the federal government.

California’s interest might best be served with a model like that of wine, where users of cannabis can pay top dollar for some renowned brand rather than merely finding the cheapest and strongest “high” on the market. Trademark granting should not be based on ambiguous ideas like moral and scandal but on the purposes behind trademarks, which rest on the interests of the individual consumers and states involved.

Cannabis: Patently Useless?

Not too long ago I was at a party where an acquaintance, upon hearing that I was studying intellectual property in law school, addressed me with a slightly tipsy and decidedly confrontational “you can’t own ideas, man!”  At the time, I just smiled and prevaricated.  It is true, though.  You cannot own ideas.  Intellectual property law is built on that very concept.  There are some fine distinctions and clarifications, and certainly some gray area, but that’s the lawyer’s bread and butter.  Intellectual property is like a contract with the government, and all contracts require both sides to gain something (‘consideration’).  The commonwealth has generally concluded that there are certain protections worth granting for the greater public good and this is where a debate on the merits of intellectual property finds footing.  We should ask what, exactly, do the rest of us get out of affording some entity protection of their copyright, trademark, trade secret, or patent?

A patent, for example, gives the inventor a few temporary rights, essentially to exclude others from making, using, selling, and importing the invention in the United States.  Thomas Jefferson wrote that “the exclusive right to invention [i]s given not of natural right, but for the benefit of society” and highlighted “the difficulty of drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not.”  Exclusive rights grant a monopoly of sorts, and a government-protected monopoly without a very important public interest being served would be embarrassing.  For example, the Post Office is a monopoly that serves the commonwealth’s need for delivery of mail.  But what concomitant need does granting a patent serve?

The United States Patent Office (USPTO) has been receiving applications for patents on strains of cannabis. This could be because a few states have legalized recreational use of cannabis or because the majority now supports legalization.  Certainly, the projections of tens of millions of dollars of potential revenue will interest businesses and investors.  But cannabis is federally illegal under the Controlled Substances Act.  Can the USPTO even grant a patent on something illegal?  More importantly, why should the USPTO grant these patents?  There are valid arguments for both sides, but ultimately the USPTO should grant these patents because whether or not those patents can be enforced is a separate question for a separate agency.

In order to patent something the inventor must provide a description of the invention that would give someone familiar with the material the ability to actually make the invention.  This “enabling” for a “person skilled in the art” is part of what the public gets.  When your temporary exclusive rights run out, we can all take advantage of your clever new invention.  Money made during the exclusive period works as a reward for your inventive mind as well as incentive for the rest of us to get out there and innovate.

Among other requirements, an invention must be “useful” to be eligible for a patent.  Just about anything can be “useful” in one application or another, but what about uses that society would not want?  Imagine Ted Kaczynski comes up with a cunning new way to disguise, package, and deliver explosive devices.  It seems patent, so to speak, that there is little “useful” about this invention.  Justice Story, better known for the Amistad case, posited that “a new invention to poison people, or to promote debauchery, or to facilitate private assassination, is not a patentable invention.”  Further, Justice Story indicated that “whether [the invention] be more or less useful is a circumstance very material to the interests of the patentee, but of no importance to the public.”  An invention can be “useful” for patentability purposes but have very little practical use. This doesn’t matter much to the rest of us because, as Justice Story put it, it “will silently sink into contempt and disregard.”

Courts have used Story’s reasoning to deny “useless” patents, usually of gambling devices or inventions to facilitate fraud.  Courts, over time, have shifted away from the sticky issue of morality and generally look toward “usefulness” with a pretty open mind.  In fact, the Federal Circuit explicitly stated that “years ago courts invalidated patents on gambling devices on the ground that they were immoral . . . but that is no longer the law.Juicy Whip, Inc. v. Orange Bang, 185 F.3d 1364 (Fed. Cir. 1999)  (Citations omitted, emphasis added).

In Juicy Whip, the invention was “designed to deceive customers by imitating another product and thereby increasing sales of a particular good.”  That court held that the “utility” requirement in the Patent Act of 1952 “[wa]s not a directive to the Patent and Trademark Office or the courts to serve as arbiters of deceptive trade practices.”  Further, the court pointed to 42 U.S.C. § 2181(a), which revokes all granted patents and denies patentability to anything “useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon.”  Essentially, that court said potentially harmful uses of inventions are not the purview of the patent office and if Congress wants something specific barred from patentability, they will pass a law to that effect.

Now you’re probably thinking “wait a minute, what about our hypothetical patent application by Kazcynski?  Surely we, as a society, still draw the line somewhere?”  Of course we do, it’s just not the Patent Office’s job.  For example, the Federal Circuit in Juicy Whip cited to In re Watson, quoting “it is not the province of the Patent Office to determine, under section 101, whether drugs are safe.”  Other agencies are responsible for safety, the FDA in that case.  Cannabis is federally illegal, but enforcing that aspect of the plant is the purview of the DEA, not the Patent Office.

The Supreme Court has held that “Congress never intended that the patent laws should displace the police powers of the States, meaning by that term those powers by which the health, good order, peace and general welfare of the community are promoted.”  Generally, it seems that a patent on an invention with dubious merits will stand (at least with regard to ‘utility’) even if you might not be allowed to use (‘practice’) it in a given jurisdiction.  Individual states can -and do- determine for themselves how best to enforce cannabis possession, growth, distribution, sales, etc.  The Patent Office was not intended as an enforcer of federal laws.  Still, cannabis is federally illegal.

A plant can be patented.  Plant applications like this application for “Midnight,” a strain of cannabis with 1:1 ratio of Tetrahydrocannabinol (THC) to Cannabidiol (CBD), are curious because possessing one is almost always in violation of the Controlled Substances Act.  While many agree that both the courts and the USPTO have abandoned Justice Story’s observed limitations, the Federal Circuit in Juicy Whip does leave some room for denying a patent application if it could not be put to legal use.  Specifically, the Juicy Whip court cited Fuller v. Berger, 120 F. 274 (7th Cir. 1903) which would deny an invention “incapable of serving any beneficial end.”  Juicy Whip also quoted a much more recent case, clarifying that “the claimed device must be totally incapable of achieving a useful result” and the “test for utility” is “not merely that the device has been used for pernicious purposes, but that it is incapable of serving any beneficial end.”  Fuller referenced the Colt revolver and its inherently dangerous nature, then advocated that an invention is useful if it can be used “to accomplish a good result, though in fact it is oftener used (or is as well or even better adapted to be used) to accomplish a bad one.”  The question, then, is can a cannabis plant accomplish a good result in spite of its federal status?

There may be some plausible legal use for, say, handcuffs that administer electric shocks, even if torture is the first use that comes to mind.  That application has expired, but it’s an example of an invention with questionable “uses.”  Is an invention that has no legal use incapable of serving any beneficial end?  Granting a patent is not a guarantee from the government that you can use, or ‘practice,’ it.  A drug might be patented but be declared unsafe by the FDA, or the FTC might protect consumers from a deceptive invention.  Our laws are malleable, subject to review and change.  Cannabis being legal or not is also changeable.  In fact, legislators are currently working on changing cannabis’ legal status.

What if an inventor during alcohol prohibition created an efficient and safer process to isolate ethanol but was denied a patent?  One amendment to the Constitution later, that invention has legal applications.  Surely this is some injustice to the original inventor, society not upholding our end of the contract.  Also, if we legalize liquor, don’t we want more efficient and safer methods of production?  On the other hand, patent applications are public domain, so an application for an illegal invention by definition enables others to make it. (Though I think it is an unlikely criminal who peruses patent office materials in hopes of some improvement to their criminal empire).

If the USPTO does grant cannabis-related patents it will likely encourage more applications of this kind.  One of the effects of decriminalization is increased awareness and understanding of cannabis and cannabis products.  Cannabis consumers trying to create “butane hash oil” (BHO) have been increasingly blowing themselves up.  Presumably this is because more people are aware of BHO in the first place.  However, the public will subsequently become more aware of the dangers and perhaps less likely to engage in those methods.  Also, people may invent and patent safer and more reliable methods or machines to produce BHO.

An “illegal” invention could be safer than previous technologies, and could further public health concerns while ostensibly subverting federal law.  Consider a particular strain of cannabis with high CBD and low THC that, due to the differences in those active substances, may have medical uses without the psychoactive effects of cannabis.  We should encourage such limited uses and developments of a drug in the same way that we encourage it for other scheduled but better known drugs.  

Certain inventions, such as the physically impossible, provably lack use, but patents should not be denied for current illegality.  Certainly some patents have been granted for substances derived from cannabis plants, which means the inventor was working with those plants – a fact that was probably not overlooked by the Patent Office. Extending that to a patent on the plant itself is a small step. Also, cannabis has some utility, either in the present sense in states where cannabis has been decriminalized, or in the possible future of federal decriminalization.  If that isn’t enough, society can still benefit from increasing knowledge in the public domain while relying on other agencies, such as the DEA or, if legalized, the FDA, to enforce any application of a patented cannabis strain.

The Champagne of Cannabis Should Not File for Bankruptcy

Humboldt(1)

Humboldt County is the Champagne of Cannabis. Ask anyone in the marijuana industry where the best “weed” in the country is grown and he or she will reply Humboldt or the “Emerald Triangle.” While this northern California region prides itself on its reputation, praise alone won’t pay the bills. The county is predicted to lose 25% of its economy with the legalization of recreational use in California. Some may interpret this as the intended demise of the illegal market. After enduring the departure of the timber and fishing industries, however, Humboldt already one of California’s poorest counties, does not have the economic elasticity to bounce back from another failed market. Humboldt is savvy to the tides of change, though, and local interests groups are advocating for better policy reform to preserve their beloved region and its famous cash crop. My blog series will focus on the lessons learned from Humboldt County’s long history with cannabis reform and why the state should follow the lead of local interest groups and residents who are dedicated to an environmentally sustainable, safe and economically profitable cannabis industry.

My name is Keri Gross and I am a JD candidate at Santa Clara Law School. I majored in Ethic Studies, Spanish and Biology at Humboldt State University. I’d like to think I represent both the outside the box thinking one would expect from innovative Silicon Valley as well as a collaborative social justice approach to critical problem solving. I came to law school after working with teen moms and adjudicated youth through Planned Parenthood’s community health education program. Inspired by this work I am now branching into criminal law, health law and policy reform. My goal is to make my legal work accessible, engaging, impactful and reliable.

Cannabis and Intellectual Property: To © or not to ©, and Other Pressing Questions

My contributions will primarily be analysis of different aspects of intellectual property in a market that has decriminalized cannabis while it remains federally illegal.  Can, and more importantly, should a state furnish intellectual property protections when they are unavailable from the federal government?  California’s possible shift from medical cannabis to recreational cannabis raises many questions about commercial and social costs and benefits to affording these protections.  While attorneys and businesses are largely approaching this topic from the perspective of private players,  my goal is to outline not just the various legal challenges and possible solutions to the concerns of cannabis-oriented businesses but, instead, to point out how a state can balance those private interests with public policy, safety, and health concerns.

I am a law student who studied science for my undergraduate degree. I am focusing on intellectual property law with an emphasis on patent prosecution. I am an associate on the Santa Clara High Tech Law Journal, and I have developed a strong interest in the intellectual property challenges presented to emerging markets and businesses.  Because of the politicized nature of these topics I am writing under a pseudonym, Lucilius, who was a friend and correspondent of one of my favorite writers.

Sending up Smoke Signals


Kendra Livingston
J.D. Candidate, 2016

I will be analyzing federal environmental and land use issues as they relate to state and tribal sovereignty. My first post will focus on the existing treaties between American Indian nations and the federal government as pertains to the regulation, sale, and cultivation of marijuana on tribal lands. I will focus on whether a tribal regulatory framework, carefully considered and crafted, would be above the reach of the Controlled Substances Act. Then I will be turning to the topic of water and resource utilization as it relates to the juxtaposition between federal and state marijuana regulation, especially in states where the agricultural industry is prevalent and water is scarce. I will also consider how state legislation or initiatives regulating or legalizing marijuana could be drafted to limit negative environmental impact.

As a second year law student and International Comparative Law Certificate candidate I am able to provide analysis of, and creative solutions to, the issues presented by drug law and policy. During my travels with the Santa Clara University School of Law, I have experienced the legal frameworks and researched national drug policies for both Cuba and the Netherlands. This summer I hope to take classes in Australia and develop an understanding for the policies utilized by that government in drug and substance abuse management. Last semester I was excited to be able to participate in the Drug Abuse Seminar taught by former Santa Clara Law Dean, Gerry Uelman, which advocated an end to the “War on Drugs” and more humane treatment of drug offenders. I am particularly interested in the environmental implications of California regulation (and possible legalization) of marijuana. Post-bar, I plan to work drafting policies to help put an end to the federal government’s controlled substance scheduling of marijuana.