Shocking Trademarks May Now Be Viable, But Medical Marijuana Marks Remain an Impossible Dream

The U.S. Supreme Court recently struck down as unconstitutional the ban on disparaging trademark registrations, but that doesn’t mean a dispensary can get a federal trademark registration.

The Supreme Court’s June 19 decision in the “Slants” case1 undoubtedly makes the other previously prohibited categories of marks registrable – those that are deemed scandalous or immoral. Accordingly, red-light sector businesses, or brands seeking to capitalize on the shock value of a racy or potentially offensive name, should slink through the USPTO now. The PTO itself has said that, if the disparagement clause is an unconstitutional restriction on free speech, then the ban on immoral or scandalous registrations is unconstitutional as well.

However, trademarks used exclusively on illegal (under federal law) goods or services are still blocked from federal registration.  Accordingly, the TTAB on June 16 affirmed the rejection of PharmaCann LLC’s applications for “Pharmacann” and “Pharmacannis” for retail services relating to medical marijuana2. Goods or services related to marijuana are not intended for use in legal commerce and thus may not be registered, despite the fact that 29 states, the District of Columbia and two U.S. territories have legalized marijuana and cannabis for medical use, according to the National Conference of State Legislatures.

The majority of the impact of the Slants decision will likely be in the creative industries, where elements of the music, art, fashion and the like have always sought to shock. The cannabis industry, evolving as it is from criminality, is more than a bit scandalous. However, cannabis commerce will need more than action from the Supreme Court in order to protect its intellectual property. It will need action from Congress to legalize marijuana at the federal level. Decriminalization of the drug is unlikely to happen soon, given both the legislature’s reluctance to address this issue, and its difficulty in working together generally.

At present, Congress has refused to provide funding to enforce federal marijuana prohibitions in states with medical marijuana laws. However, the Trademark Trial and Appeal Board ruled June 162 that a lack of enforcement funds doesn’t mean a law is repealed. The TTAB said that should Congress change its view and appropriate enforcement funds next year, individuals who sold medical marijuana during the funding freeze could be prosecuted.

1 Matal v. Tam, Lee v. Tam, U.S.S.Ct., No. 15-1293, 6/19/17

2 In re PharmaCann LLC, TTAB, No. 86520135, 6/16/17

Micheline Johnson

Micheline Johnson

Of Counsel at Baker Donelson
Micheline Johnson is co-chair of Baker Donelson's Trademark and Branding Group. She is a registered patent and trademark attorney and concentrates her practice in intellectual property. Contact her at mjohnson@bakerdonelson.com.
Micheline Johnson