Federal or state trademarks, which should I register? This is a question we regularly get in our IP practice. For cannabis brands in particular, the answer is often straightforward.
The lawful use requirement
The United States Patent and Trademark Office (USPTO) is responsible for registering trademarks at the federal level. According to the Trademark Act (also known as the Lanham Act), for a trademark to be registered, it must be in use in commerce as of the application filing date. USPTO interprets the relevant statutory provision as requiring lawful use in commerce.
Other than hemp (cannabis that contains ≤ 0.3% THC), cannabis remains an illegal substance according to the Controlled Substances Act, meaning that commerce involving non-hemp cannabis is unlawful. Commerce in certain hemp products (for example, CBD foods) is also unlawful on the basis of the Federal Food, Drug, and Cosmetic Act (FDCA or FD&CA).
For brands that wish to register a trademark in connection to non-hemp cannabis and/or unlawful hemp products, the only option may be to register a state trademark. States will generally register trademarks used in connection with goods and/or services that are legal in that state– even if they are illegal federally. However, states may
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