This post is the first in a series by Kumar Jayasuriya, attorney and Ober’s multi-talented Legal Research Manager.
May a company register a trademark connected to the use of a controlled substance, such as marijuana?
Recently, a federal court said “Yes.” Started in 1974, the periodical magazine High Times reports on the medical and recreational use of marijuana and continues to advocate for the relaxation of state and federal drug laws. High Times’ publisher, Trans-High Corp. (“THC”), owns the trademark HIGH TIMES for use on, among other things, “books about cannabis” and “magazines about hemp.” In August of last year, THC filed an infringement lawsuit targeting Richard Reimers, a Washington State-licensed marijuana dispensary owner operating under the name High Time Station (“Reimers”). In response to the suit, Reimers counterclaimed that THC’s trademarks be cancelled because THC had allegedly used them on unlawful goods not listed in the registration certificates.
Reimers’ counterclaim alleged sale of drug paraphernalia and controlled substances based on the claim that THC’s act of printing advertisements by third-party companies in its HIGH TIMES magazine violates the Controlled Substances Act. In fact, the United States Patent and Trademark Office is expressly permitted by statute to inquire about compliance with federal laws to confirm that the trademark applicant’s use of the trademark in commerce is in fact lawful. Use of a trademark on unlawful goods is grounds for cancellation.
However, the United States District Court for the Eastern District of Washington dismissed Reimers’ counterclaim upon a finding that a trademark registration is only vulnerable to cancellation if the goods and services listed in the registration are proven to be unlawful. None of the goods and services in the THC registrations were unlawful, said the Court, because the Controlled Substances Act expressly permits publications and advertisements “which merely advocate the use of a similar material, which advocates a position or practice, and does not attempt to propose or facilitate an actual transaction in a Schedule I controlled substance.” 21 U.S.C. 843.
The court dismissed (with prejudice) Reimer’s counterclaim for cancellation of THC’s federal registrations. This is not the last word on trademarks related to unlawful goods. In addition to the Reimer case in Washington State, THC has filed similar trademark infringement claims in Texas, New York and Colorado. It is just the beginning for protection of marijuana related marks. As more and more lawful marijuana-related businesses spring up in the wake of marijuana legalization, trademark use will be only one of the many issues that presents a case of first impression to the nation’s courts.