By Paula Clancy
Cannabis trademark owners are not able to obtain Federal Trademark Registrations in the U.S. This position was affirmed by the Trademark Trial and Appeal Board ("TTAB") last month in In Re NL LLC, wherein the Board held that for a trademark to meet the "use in commerce" requirement, the use must be "lawful".
Although cannabis and CBD products have been legalized in several U.S. states, the Federal Food, Drug & Cosmetics Act (FDCA) and the Controlled Substances Act (CSA) prohibit the sale of products containing cannabis.
The Applicant argued that under Colorado state law, its use was indeed "lawful", however the TTAB rejected this argument. “The fact that the provision of a product or service may be lawful within a state is irrelevant to the question of federal registration when it is unlawful under federal law”. Under the Supremacy Clause of the U.S. Constitution, in cases where there is conflict between federal and state law, federal law prevails.
This is of course disappointing to cannabis brand owners who are excluded from the benefit of Federal Trademark Registration. The upcoming U.S. election may provide some solace given that Biden/Harris have vowed to legalize cannabis if they win.
We will continue to track these developments as cannabis is a growing sector in Canada, and many Canadian companies are anxiously awaiting the decriminalization of cannabis in the U.S.
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