Unlocking Federal Trademark Protection: The Implications of Marijuana Rescheduling for Cannabis Brands

The DEA’s expected reclassification of marijuana to a Schedule I substance will have far-reaching implications for cannabis brands, paving the way for them to benefit from federal trademark protection. 

To qualify for federal trademark registration, the goods or services to which a trademark is applied must comply with all applicable federal laws, and the United States Patent and Trademark Office (USPTO) will refuse registration of trademarks used in connection with the goods and services that are unlawful.  As it stands now, marijuana is categorized as a Schedule I prohibited substance under the Controlled Substances Act (CSA), making marijuana unlawful at the federal level and thus ineligible for federal trademark protection.  In fact, because marijuana is illegal at the federal level, the USPTO also refuses registration for marks related goods or services that involve the production, distribution, or use of marijuana.  Rescheduling marijuana to a Schedule III substance would change all of that.  Because Schedule III drugs and substances can be used legally (under certain circumstances), trademarks used on such products can be federally protected and registered with the USPTO.

Yet, even with the expected rescheduling, cannabis brands may still have to contend with other challenges when it comes to federal trademark protection. For example, if the advertising for a cannabis product contains any therapeutic or medical use claims, such as “pain relief” claims, such a product may be considered an unapproved drug in violation of the Federal Food, Drug, and Cosmetic Act (FDCA).  In such an event, the USPTO likely will refuse registration under the lawful use requirement, even if marijuana were classified as a Schedule III substance.

However, for many cannabis brands, the prospect of rescheduling represents the possibility of federal trademark protection.  A federal trademark registration has numerous advantages, which includes providing evidence of nationwide validity and exclusive ownership of the trademark for the goods listed in the registration.  As the expected reclassification comes into realization, it is imperative for cannabis brands to readapt their trademark strategies and capitalize upon the opportunities that marijuana rescheduling will offer.

Navigating the legal intricacies of trademark protection in the cannabis industry is essential for your brand’s success and security.  You’ve likely invested much of your time and energy into growing your brand. For this reason, it is important to know how to protect that investment. Reach out to our trademark attorneys and let our experienced team guide you in safeguarding your brand and products. You deserve the best legal support, and we’re here to provide it.