Don’t be Confused: The Battle is Still on as California State Trademarks for Actual Cannabis Products are Still Barred even with Proposition 64 enacted on Jan 1, 2018

Don’t be Confused: The Battle is Still on as California State Trademarks for Actual Cannabis Products are Still Barred even with Proposition 64 enacted on Jan 1, 2018

For many in California the Adult Use of Marijuana Act (Proposition 64) effective on January 1, 2018 has been greeted with excitement as the legalization of cannabis ushers in the New Year with sales and speculation. However, for many in the blooming industry, it’s frustrating that State trademark registration for Cannabis products are still barred.

Bill Downs, an administrator at the SOS office, was able to confirm[1] as of Jan 1, 2018 the SOS is still taking the stance that only valid USPTO classification of goods will be allowed in California. As most of us embroiled in the battle already know, the USPTO has blocked any cannabis product Marks or even paraphernalia Marks that violate the CSA Act:

“drug paraphernalia,” defined in § 863 as “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under the [CSA].” 21 U.S.C. § 863.4 Section 863(e). (In re Ultra Trimmer, L.L.C., Serial No. 86479070 (TTAB Nov 29, 2016)).

Which means not only are cannabis product Marks barred at the USPTO, but even devices like “bongs.” Interestingly enough, CA Bus & Prof Code § 14272 states:

 “ The intent of this chapter is to provide a system of state trademark registration and protection substantially consistent with the federal system of trademark registration and protection under the Trademark Act of 1946 (15 U.S.C. Sec. 1051 et seq.), as amended. To that end, the construction given the federal act should be examined as nonbinding authority for interpreting and construing this chapter.” (emphasis added).

In other words, it would appear that the SOS could allow cannabis products if desired. And rather inconsistently with the USPTO rules, the SOS is currently allowing “paraphernalia” Marks that the USPTO bans.

Downs stated¹ that the SOS is willing to register anything else but the actual product itself: e.g. service marks, smoke devices, accessories... When asked if “medicinal herbs” (a USPTO classification of goods that exists) would be acceptable, Downs hesitated, but stated, “I couldn’t.” He said the SOS couldn’t allow cannabis products until bill AB-64[2] has passed. So for whatever reason, the SOS seems to be willing to cross the line with cannabis paraphernalia, but unwilling to go so far as the actual product itself.

For those of you who may not know, CA Bill AB-64 (Assemblymember Rob Bonta) provides legislation to expressly allow the SOS to trademark cannabis products and is currently stuck in Senate Committee.

For now, IP owners can try and file on acceptable SOS classification of goods to gain some peripheral protection as they have been doing. Moving forward, letting the committee members know AB-64 needs to be made a priority, or perhaps, expressing to the SOS (an elected office independent of the CA executive branch) how they feel may help.

[1] via phone call Jan 4, 2018 Mary Fales and Bill Downs

[2] http://leginfo.legislature.ca.gov/faces/billTextClient.xhtml?bill_id=201720180AB64