Shocking trademarks may now be viable, but medical marijuana marks miss

The Supreme Court recently struck down as unconstitutional the ban on disparaging trademark registrations. However, that does not mean that a medical marijuana dispensary can receive a federal trademark registration.

The court’s decision in Matal v Tam, Lee v Tam (USSCt 15/1293 (June 19 2017)) on disparaging marks undoubtedly makes the other previously prohibited categories of mark registrable, including those that are deemed scandalous or immoral. Red-light sector businesses or brands seeking to capitalise on the shock value of racy or potentially offensive names should therefore move through the US Patent and Trademark Office (USPTO) now. The USPTO has stated that, if the disparagement clause is an unconstitutional restriction on free speech, then the ban on immoral or scandalous registrations is also unconstitutional.

The Tam decision is likely to have a major effect on creative industries such as music, art and fashion, where shock value is common. While the cannabis industry has had its fair share of controversy, cannabis commerce will require more than Supreme Court action to protect its intellectual property (eg, legalising marijuana at the federal level will require Congressional action). The decriminalisation of marijuana is unlikely to happen soon, given both the legislature's reluctance to address this issue and its difficulty in working together generally.

Congress has refused to provide funding to enforce federal marijuana prohibitions in states with medical marijuana laws. However, the Trademark Trial and Appeal Board (TTAB) ruled in In re PharmaCann LLC (TTAB 86520135 (June 16 2017)) that a lack of enforcement funds does not mean that a law is repealed. The TTAB held that, should Congress change its view and appropriate enforcement funds next year, individuals who sold medical marijuana during the funding freeze could be prosecuted.

Accordingly, the TTAB affirmed the rejection of PharmaCann LLC's applications for PHARMACANN and PHARMACANNIS for retail services relating to medical marijuana. Goods or services relating to marijuana are not intended for use in legal commerce and therefore may not be registered, despite the fact that 29 states, the District of Columbia and two US territories have legalised marijuana and cannabis for medical use, according to the National Conference of State Legislatures.