Has the PTO Gone to Pot?

Pipe dreams of trademark protection for marijuana go up in smoke . . .

On April 20, 2010 the USPTO issued a federal service mark registration to Sunny Chan dba Good Leaf Collective for the mark GOOD LEAF COLLECTIVE for “Retail store and on-line retail store services featuring medical marijuana.”  Ironically (and probably much to the delight of Mr. Chan), April 20 is a counter-culture holiday amongst marijuana users.  Unfortunately for Mr. Chan and the nearly 100 other applicants who are waiting for the USPTO to issue registrations for their marijuana related products and services, on July 20, 2010 the PTO had a change of heart and the applicant’s pipe dreams may have gone up in smoke.

On July 20, 2010, the USPTO sent Mr. Chan a letter informing him that his federal service mark registration was issued mistakenly and has since been canceled.  The letter continues to state that Mr. Chan’s application has been restored to pendency and the file returned to the Examining Attorney to issue a refusal.

In a related twist, the USPTO publishes a Manual of Acceptable Identifications of Goods and Services on its website for use by federal trademark registration applicants.  According to a July 19, 2010 WSJ article, on April 1, 2010 the PTO approved an ID for “Processed plant matter for medicinal purposes, namely medical marijuana.”  The USPTO offers a public service whereby applicants (or their counsel) can suggest IDs to be added to the manual.  I have used this service many times to assist clients in the sustainabilitiy space get their innovative product and service descriptions pre-approved by the PTO. Apparently, someone suggested the medicinal marijuana ID, which the PTO approved given that there are fifteen states in which medical marijuana is legal (AK, CA, CO, DC, DE, HI, ME, MI, MO, NV, NJ, NM, OR, RI, VT, WA).  The addition of marijuana to the manual apparently created a rush on the PTO with several new applications filed for marijuana and marijuana related products and services.  Apparently, the marijuana ID was removed in mid-July amidst questions from the Wall Street Journal about its prudence.

Thus, for now, legal medical marijuana growers and purveyors will have to rely on common law rights, or use broader categories in their trademark applications — such as dried plants or agricultural seeds — to protect their trademarks nationwide.