The marijuana industry still lives in the shadows of trademark law while the drug remains federally illegal, leaving businesses and their lawyers to seek workarounds to protect their brands.
The Biden administration said earlier this year it wants to move marijuana off Schedule I, which covers drugs with no accepted medical use like heroin and ecstasy, to Schedule III, which includes common but highly regulated prescription drugs. But that proposal likely won’t change the trademark limbo for marijuana businesses anytime soon, cannabis attorneys told Law360.
The attorneys said the barriers marijuana businesses face to register marks for their products is a disservice to consumers, since one of the main reasons trademark laws exist is to help buyers judge the quality of a product by being able to identify where it came from.
“It’s very much to the detriment of the American public because trademark law is really a child of consumer protection laws,” said Shabnam Malek, partner and co-founder of Brand & Branch LLP and founding president of the International Cannabis Bar Association. “So two-thirds of Americans with access to lawful cannabis are deprived of the reliance on brands, an indicator of quality control, of quality of source.”
The U.S. Patent and Trademark Office has had a “lawful use” requirement for marks for decades, and since marijuana is federally illegal, the doctrine remains a roadblock to registration. That has meant businesses and their attorneys have had to find other ways to have a presence on the federal trademark registry, mainly with registrations that do not cover the cannabis products they actually sell.
About 15 years ago, Mary Shapiro, managing director of Evoke Law PC, said she had a “lightning bolt” moment: What if she tried to get a registration for a client’s brand in the category of education for informing consumers about cannabis on its website? That would be free speech, she reasoned when she registered the brand in another category in 2010.
“They don’t have a registration for retail stores, which is what they are,” Shapiro said. “They don’t have a registration for the [prerolled joints] that they sell under their brand, but they have a registration for providing information about cannabis.”
The hope is that having a registration on the federal database will deter potential businesses that are searching and doing clearance for a particular trademark, Shapiro said. She acknowledges, though, that it’s not a perfect solution.
“The best thing is to have a registration for the actual goods and services that you’re selling,” Shapiro said.
Tom Zuber, managing partner at Zuber Lawler LLP, put it another way.
“If a cannabis company is using its mark to provide education in a meaningful way, then yes, that makes perfect sense to do that. At the same time, protecting a brand in respect of education doesn’t necessarily provide the protection that’s needed to ward off those that might infringe your brand in respect of other products,” he said.
Twenty-four states as well as the District of Columbia have legalized marijuana for recreational and medical use, while 15 others allow medical use only.
While marijuana businesses can register product trademarks in these states — and many do — a state trademark only goes so far, according to attorneys.
“You don’t have all the arrows in the quiver to effectively protect your brand because you don’t have a federal registration, which grants you so many privileges,” Shapiro said.

A ‘Troubling’ Court Ruling

Unlike pharmaceutical companies, marijuana businesses walk a fine line with intent-to-use applications, which can be voided for lacking a bona fide intent to use the marks in legal commerce, attorneys say.
Rescheduling, when it eventually happens in a year or two — or longer if there are lawsuits — could make marijuana more widely available for medicinal use by prescription, and it’s possible pharmaceutical companies could register trademarks for those products, according to Chelsie Spencer, managing attorney at Ritter Spencer Cheng PLLC.
“So theoretically, on the date when the rescheduling determination comes down, more than likely you’re going to see some of these large pharmaceutical companies filing investigational new drug applications,” she said. “That same day, they can file the intent-to-use application with the USPTO for that cannabis-based pharmaceutical formulation, and if it goes through clinicals and is approved as an FDA Schedule III drug, there’s zero prohibition to registration on the mark for that.”
Spencer said this is part of the problem she has with the USPTO’s lawful use rule.
“I think they treat pharmaceutical companies very differently than they treat cannabis companies,” she said.
A company called Joy Tea Inc. pointed that out at the Federal Circuit in 2022 while appealing a Trademark Trial and Appeal Board decision rejecting the business’ application for a cannabidiol tea because the U.S. Food and Drug Administration has not regulated products containing CBD.
“[They] basically argued that the entire pharmaceutical industry gets to apply for a trademark registration in advance of drug approval when they don’t know if their drug could be denied, and then that thing is not lawful,” said Malek, who was not involved in that case. “And yet they get to hang out and have this bona fide intent to use.”
Before Joy Tea voluntarily dismissed its appeal in September 2022 because it was planning to close, it told the Federal Circuit about the disparate treatment it was subjected to by the USPTO.
“It is undisputed that common pharmaceutical company trademark procurement practice includes filing [intent to use] trademark applications prior to FDA approval — and even prior to FDA application submission,” Joy Tea said, adding that “while pharmaceutical ITU applications are regularly approved and issued notices of allowance, appellant’s was rejected.”
In April, a Ninth Circuit panel decision alarmed cannabis businesses because of its holding that district courts — in addition to the USPTO — can cancel pending trademark applications during brand disputes if there is no bona fide intent to use the marks in legal commerce.
“The reason why this is of particular concern for the cannabis sector is that we live in the world of pending trademark applications,” Malek said. “So this idea that now somebody can come in and challenge our pending applications is pretty troubling.”
While a Schedule III drug requires a prescription, Clark Wu, partner at Bianchi & Brandt, doesn’t foresee pharmaceutical companies or pharmacies making medical marijuana dispensaries obsolete.
“Practically speaking, I think the federal government is going to have to come up with some type of model that accommodates current state regimes, because states already have this,” he said.
Plus, attorneys say pharmacies might not offer cannabis products in the form that consumers want.
“I don’t see a day when pharmacies are dispensing flower or selling joints,” Shapiro said. “I can see them doing topicals. I can see them doing sleep products.”

‘The Wild West’ of Trademarks

The registration of marks outside a business’ core offerings, such as customer education or apparel, could also stand on shaky ground. While it’s legitimate to obtain registrations for ancillary services, the business must use the marks.
“Your client has to actually be offering those goods and services to others under the brand,” Malek said. “You can’t just have an education program for your own budtenders at your dispensary. That might not amount to trademark use.”
The USPTO has said it is constantly monitoring policy and legal changes that could affect how the office examines trademark applications for marijuana businesses, but declined to comment for this story.
With the uncertainty about what rescheduling will mean for medical and recreational marijuana businesses, attorneys are advising their clients to take advantage of any available means to protect their brands. The period for the public to submit comments to the U.S. Drug Enforcement Administration closed last month, with nearly 43,000 submissions.
“IP protection in the cannabis space is essentially the Wild West,” Wu said. “That doesn’t mean you can’t obtain any protection. So I like to tell clients that in this space, it’s a matter of ‘grab what you can.'”
Brands don’t always need to register a trademark to have common law rights for using a product in commerce, said Robert Hoban, strategic adviser to Clark Hill PLC’s cannabis industry group. But he added it’s still important to formally preserve that protection and put the world on notice. He uses the example of registering an apparel line.
“Let’s call it ‘Bob’s Buds.’ I’m protecting this picture of Bob’s Buds with a flower on it. That’s my logo,” Hoban said. “I’m saying this is my apparel line, and then meanwhile, at the same time, I have a vape line with the same imagery on it so then at least if I protect it on the clothing line, I can license that name or that brand, that logo to the other side as well.”
Hoban said this sets the groundwork in case of a trademark dispute if another party does something that would risk confusion.
“Then all of a sudden you’ve at least arguably violated my trademark and my IP and that gives us a real reason to sort it out and not just ignore each other,” he said, “and in the worst case scenario, go to court.”
Hoban predicts federal legalization of marijuana will be a moving target for a while.
“Which is why you’re going to continue to see a little bit of smoke and mirrors with brands,” he said.
–Additional reporting by Sam Reisman and Gina Kim. Graphics by Ben Jay. Editing by Adam LoBelia.