Cannabis IP – Why the USPTO is Friendly to Patents and Hostile to Trademarks for Cannabis

Here’s a True Story That Is Puzzling At First

But here’s a strange story that really is true:  The single government agency in charge of granting two major kinds of federal IP protection – the United States Patent and Trademark Office (USPTO) — treats Cannabis in completely opposite ways when it comes to patents vs. trademarks.  That might seem crazy, irrational, maybe less believable than the government monopoly story I just debunked in the previous paragraph; however, it’s true and there’s actually a reason so simple that this won’t be a very long post.

As demonstrated above, the USPTO loves Cannabis patents.  It has been granting Cannabis-related patents since the 1940s at least — if you don’t believe me, go to MJPatentsWeekly.com and search words such as abrading or marihuana (with an ‘h’).  Those will take you back to some old patents.  But try filing a trademark application for anything that hints at a connection with a real Cannabis product and wait for the 99 questions you will get from the trademark examining attorney.

So why this big difference in treatment?  It’s actually simple: it’s a matter of the very different laws that define the requirements for getting a patent vs. those for getting a trademark.  And, when the USPTO applies those laws as written, these two extremely different outcomes follow.

Patents are For Inventions that Are New and Not Obvious – That’s It

The patent statute is quite clear in defining what it takes to get a patent.  Without getting lost in a lot of other requirements irrelevant to this comparison, the key requirements are that, when someone claims to have invented something, the patent examiner’s job is to compare the claimed invention to what was known before (referred to as the ‘prior art’) and determine whether the claimed invention is new and whether it is obvious.  If the invention is new and non-obvious, it qualifies for a patent.  Notably, the examiner is not in charge of asking whether it is 1) safe, 2) legal, 3) free of other people’s patent rights, 4) clear of any regulatory hurdles, 5) environmentally friendly, 6) politically correct, etc. … you get my point.

Trademarks are For Goods and Services used Commercially Across State Lines (Legally, That Is)

In contrast, the trademark statute has a very different requirement, because federal trademark rights accrue from ‘use in commerce’ – this means use in commercial activity across state lines.  You can probably tell where this is going…so long as Cannabis is federally illegal, it will be impossible for ‘use in commerce’ to occur; therefore, it will be impossible for federal trademark rights to accrue.  Thus, it is simply not possible for something that cannot legally move across state lines to qualify for a federal trademark.  Can’t happen.  Period.

So, to put it simply, this isn’t a matter of trademark examiners being mean while patent examiners are nice.  It’s merely a matter of logical/legal impossibility in one case (trademarks) vs. issues of illegality being irrelevant in the other case (patents).

So whether that myth about the government conspiracy to “own the MJ patent” will ever die off or not, hopefully this patent/trademark paradox finally makes sense.  And it doesn’t seem to stand any chance of changing until the laws change that govern movement of Cannabis across state lines.