Cultivating a Better Strain of Trademark Law: Why the Unlawful Uses Doctrine Should Be Modified for State-Legal Marijuana-Related Marks

By Crocker, Sam | Journal of Corporation Law, Spring 2019 | Go to article overview

Cultivating a Better Strain of Trademark Law: Why the Unlawful Uses Doctrine Should Be Modified for State-Legal Marijuana-Related Marks


Crocker, Sam, Journal of Corporation Law


I. INTRODUCTION                                                     591 II. BACKGROUND                                                      592       A. Overview of Marijuana Regulation in the United States      592       B. Trademarks and the Unlawful Uses Doctrine                  594           1. Origins and Evolution of the Doctrine                  594           2. Application to the Marijuana Industry                  595           3. The Problems Arising from the UUD in the State-Legal   597              Marijuana Industry and Current Methods of Protection       C. The Beneficial Uses Doctrine                               599           1. Story-ed Origins and a Juicy Demise                    599           2. Modern Applications and Marijuana-Related Patents      600 III. ANALYSIS                                                       601       A. Comparing the Policy and Origins of the Beneficial Uses    601          and Unlawful Uses Doctrines       B. 20th and 21st Century Changes in Societal Norms            602       C. Alternate Means of Meeting the Goals of the UUD and the    603          BUD       D. Challenges and Controversy                                 603 IV. RECOMMENDATION                                                  605       A. Recommendations for the Federal Courts                     605       B. Recommendations for the USPTO                              605       C. Recommendations for Marijuana-Related Mark Applicants      606 V. CONCLUSION                                                       607 

I. INTRODUCTION

Within the last five years, numerous individual states legalized the recreational use of marijuana, leading to a booming quasi-legal industry for marijuana and marijuana-related products. (1) These products range from actual leaf cannabis, to cannabis-infused food products, to assorted accessory products like lighters and rolling papers. (2) This industry has been forced to adapt to a host of legal issues arising from its quasi-legal status, many of which arise within the intellectual property field. In particular, industry participants are unable to receive federal trademark protection for their branding efforts, due to the United States Patent and Trademark Office's (USPTO) adherence to the Unlawful Uses Doctrine (UUD). (3) This doctrine mandates that the statutory requirement that trademarks be used in commerce must be interpreted as lawful use for purposes of registration. (4) This doctrine has caused and continues to cause a host of problems for state-legal cannabis industry participants. (5)

This Note argues that the Unlawful Uses Doctrine should be curtailed in the examination of trademarks related to the sale of cannabis and cannabis-related products, much as the Beneficial Uses Doctrine has been phased out in the examination of patents. This Note will first discuss the history of both doctrines, their current status, and how each has been applied to USPTO applications related to cannabis. The next Part will analyze the change in application of each doctrine and assess how the Unlawful Uses Doctrine could be limited in the review of cannabis marks. Finally, this Note will recommend that the federal courts and the USPTO adopt a qualified approach, permitting the registration and defense of cannabis trademarks in select situations based on compliance with state cannabis laws.

II. BACKGROUND

This Part will first briefly examine the legal history and current status of marijuana in the United States. It will then explore the common-law origins of the Unlawful Uses Doctrine in trademark law, and how that doctrine interacts with cannabis. Third, this Part will trace the history and evolution of the Beneficial Uses Doctrine in patent law. Finally, it will address the ways in which the Unlawful Uses Doctrine has been applied to the state-legal marijuana industry and describe the problems that have resulted from that application.

A. Overview of Marijuana Regulation in the United States

Marijuana was first available in the United States in the early 1900s, and could be legally purchased in the form of "Indian Hemp" cigarettes. …

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