[From Cannalex: Our colleague Dave Oppenhuizen is a patent and trademark lawyer registered with the United States Patent and Trademark office. He is a member of the Michigan Bar Association’s Marijuana Law Section, and provides intellectual property legal advice to various clients, including those considering state legal marijuana-related activities. His insights on trademarks in the age of legalized marijuana follow.]
In our previous blog, we discussed the Federal Law aspects of Trademark protections for cannabis-related activity. What follows is a discussion under Michigan law.
Trademark Rights under State Law
State trademark registration is likely the best approach for those who live in a state where marijuana is legalized for recreational or medical purposes. Washington, Oregon, and Colorado currently grant state trademark registrations for marijuana-related goods.
In Michigan, this is relatively uncharted territory. There have not been many marijuana-related state trademark applications filed here. In fact, the Department of Licensing and Regulatory Affairs (LARA) appears to still be working this issue out as cannabis-related trademark applications are starting to get filed. The initial response from LARA was that it would not be granting state trademark registrations for cannabis-related goods.
LARA stated that cannabis-related trademark applications include subject matter that is immoral, deceptive, or scandalous. In addition, it stated that these trademark applications would be denied because marijuana is illegal under the CSA.
However, there appears to be no basis under Michigan Law for these rejections. A trademark application in Michigan can be rejected if the mark itself is immoral, deceptive, or scandalous. However, LARA appears to be rejecting trademark applications on the basis that the underlying goods associated with the mark are immoral or scandalous – not the trademark itself.
In addition, the fact that medical marijuana use was authorized in Michigan by a voter initiative is a strong indicator that the general public in Michigan would not consider a trademark for cannabis-related goods to be immoral or scandalous.
Furthermore, Michigan trademark law states that “[u]pon compliance by the applicant with the requirements of this act, the administrator shall issue a certificate of registration to the registrant.” The law is written to impose a legal obligation on LARA to issue the trademark registration unless the application does not comply with the state law. And the state law does not appear to require the goods to be lawful under federal law.
In addition, Michigan’s statute includes a specific list of reasons for prohibiting trademark registration to particular marks. That list does not permit LARA to deny trademark registration on the basis the goods are illegal under federal law.
Time will tell how LARA responds because Michigan Law appears to create an affirmative obligation upon LARA to grant the trademark registration, and there does not appear to be any viable basis under the state statute for denying the registration.
This story is continuing to unfold, and you should contact us to discuss your best options for protecting your cannabis-related trademarks.