KMK Law Cannabis & Craft Beer Blog

Although about half of the states have legalized medical marijuana, and the department of justice has declared it to be a low enforcement priority, marijuana is still a controlled substance under federal law, with criminal penalties for possession and sale.

The difference between federal and state law is widely discussed.  Another tension has gone under the radar, however.  The United States Patent and Trademark Office (“USPTO”) has been treating marijuana differently in patent applications than in trademark applications.

The Trademark Trial and Appeal Board (“TTAB”) will put the kibosh on any application to register a mark for use on marijuana or related services.  It reasons that a trademark must be used in commerce, and that “the use of a mark in commerce must be ‘lawful.’”  And medical marijuana is unlawful on a federal level, no matter what the states have done, so marks simply cannot be registered for use in connection with marijuana, whether medical or otherwise.

At the same time, the Patent Office appears to be routinely issuing patents with marijuana as the subject matter.  For example, U.S. Patent No. 8,905,038 relates to a “Smoking Device for Smoking Through a Liquid” described in summary as “a portable small-size hookah suitable for smoking medical marijuana.”  And U.S. Patent No. 8,753,696 relates to “Methods for Preparing Cannabis and Related Products,” with a disclosure that calls the result “Mr. Dave’s THC Sprinkles.”  Both of these patents issued in 2014, with no objection in their prosecution history based on illegality.

There appears to be federal court precedent from the late 1800s that would provide a means for rejecting such applications based on a lack of utility when the inventions at issue provide a benefit only to illegal acts.  In Juicy Whip, Inc. v. Orange Bang, Inc., the Federal Circuit acknowledged this old line of cases holding that one cannot patent inventions that are “injurious to the well-being, good policy, or sound morals of society.”  Some such decisions refused to enforce patents that had been granted on gambling machines because of the illegality of gambling.

Juicy Whip distinguished those decisions and noted that their principle “has not been applied broadly in recent years,” but it did not explicitly overturn the holding that an invention with an exclusively illegal use is unpatentable for lack of utility.  The decisions themselves seem to have become obsolete primarily because gambling was legalized in more jurisdictions and came to be viewed with somewhat less moral outrage.

In sum, it seems like the USPTO has found a legal “hook” to deny trademarks for use on federally banned substances, and yet has ignored an existing legal “hook” that could be used to deny patents on a very similar ground.

It remains to be seen whether federal courts will refuse to enforce issued patents on illegal marijuana-related inventions, as they did more than a century ago for gambling machines.  With the currently booming – and illegal – medical marijuana industry, it seems that the proposition is likely to be tested soon.