As David Oxenford has previously commented, even in states where marijuana has been legalized, broadcasters should be cautious about accepting advertising for marijuana or related paraphilia. Specifically, decisions by the FDA and the Department of Justice have done little to cut through the smoke shrouding the issue. Now, perhaps the last United States agency that one might expect to have anything to say has weighed in as well, but the haze remains thick.

Specifically, the US Patent and Trademark Office is not viewed as a policy-making agency, charged with making decisions about what activities or behavior are permissible or impermissable. Rather, it determines whether trademarks qualify for federal protection through registration, considering issues such as the distinctiveness of a mark and whether it is confusingly similar to a previously registered mark. As we have discussed in our Trademark Basics for Broadcasters series and our follow-up free webinar, although the various factors seem cut and dried, there is often a great amount of subjectivity and discretion that goes into evaluating each factor.

However, as discussed in my first post for this blog almost one year ago, there is one area where the PTO has been called upon to interpret statutory language in a way that reflects the current mores and values of society: whether a mark is immoral, scandalous or disparaging – and therefore barred from registration. Two well-publicized cases have been winding their way through the courts. The mark THE SLANTS for an Asian-American band, which selected the name in order to make a statement about racial and cultural issues, was initially denied registration on the basis that it was viewed as disparaging by a substantial portion of people of Asian consent. On appeal, the prohibition against registration of disparaging marks was held to be unconstitutional because the government is approving or disapproving of speech based on the viewpoint it expressed. The same argument could be made [or has been made – unsuccessfully -] against the FCC’s statutory obligation to prevent obscene, indecent and profane content from being broadcast on the radio or TV.

At roughly the same time, but in a different Court of Appeals, the Washington DC NFL franchise has been fighting a claim that the mark REDSKINS is disparaging to a substantial portion of Native-Americans. The United States Supreme Court has agreed to rule on the decision in the Slants case. Even though the outcome of that case may effectively determine the outcome of the Redskins case, the Supreme Court has denied the football team the opportunity to participate in the case.

In these types of cases, although the PTO makes judgments as to public policy, it is effectively required to do so because the trademark statute includes the prohibition against the registration of disparaging marks. Whether it is well suited to make these types of decisions is a separate question.

The PTO has also made what can be viewed as a public policy decision whether trademarks for controlled substances or related paraphernalia can be registered. Here, the PTO has drawn a clear line against the registration of such marks.

Only trademarks for goods or services “in commerce” can be registered. “In commerce” is recognized by the courts as meaning commerce that can be regulated by Congress, i.e., interstate commerce, as opposed to intra-state commerce. Nevertheless and although it is nowhere stated in the statute, the PTO has determined that “use in commerce” means “legal use in commerce.” Thus, the agency has concluded that the use of a trademark to brand controlled substances or related paraphernalia that are illegal to possess or sell is not a use “in commerce.” (If, however, possessing or selling controlled substances is not a use in commerce, it could be argued that Congress cannot make them illegal!)

There have been several cases this year where the applicant sought to register its brand for marijuana-related paraphernalia. The applicants have pointed to the fact that a majority of states have decriminalized marijuana to some degree and that the Justice Department has issued a memorandum stating that it will not seek to prosecute anyone for the possession of marijuana if it is authorized by state law. (The latter argument may no longer be available after January 20, 2017, as the nominee selected to become the new Attorney General has a long history of being opposed to any use or sale of marijuana.) The PTO has rejected these arguments, relying on a long line of case law holding that marks used for illegal goods or services are not used “in commerce” and cannot be registered.

There is, however, a statutory exception for the use of marks that are “authorized by state law.” The PTO has read this exception to require a showing that the applicant is actually licensed or otherwise specifically authorized by the state to sell marijuana. Again, the PTO seems to be reading something into the statute, which requires authorization by the statute, rather than authorization by some state agency. Under this reasoning, if a state law simply held that possessing less than a set amount of marijuana was permitted, the PTO would not find that it was “authorized by state law.”

The Patent and Trademark Office has stated that its function of registering trademarks has the purpose of assisting businesses in protecting their investments, promoting quality goods and services, and safeguarding consumers against confusion and deception in the marketplace. The ban on registering trademarks for marijuana and marijuana-related products would not seem to serve any of these goals. As such, it can be argued that the PTO has gone beyond its statutory mandate in order to make public policy.

In any event, these decisions make the state of marijuana advertising – or the branding of any other product that could be deemed illegal or immoral – even more murky. Certainly, if a brand can’t be protected, much of the incentive for advertising that brand disappears. Moreover, the logic used in these trademark cases further highlights the status of these products under Federal law – and the risk that exists in any advertising by a Federal licensee, particularly with a Department of Justice which may not be as lenient about the enforcement of the law as is the current administration.