Is the lawful use requirement for trademarks lawful? In a recent Vanderbilt Law Review article, Robert A. Mikos compellingly argues that it is not. The article is a must-read for anyone interested in the topic of cannabis trademarks, but highlights a problem that goes far beyond cannabis, and indeed trademark law.
For those unfamiliar with the the lawful use requirement, it requires that “use of a mark in commerce must be lawful under federal law to be the basis for federal registration under the U.S. Trademark Act [Lanham Act].” USPTO has consistently relied on the requirement to deny applications to register trademarks that describe cannabis products that are unlawful under the Controlled Substances Act or the Federal Food, Drug, and Cosmetic Act.
At one level, the lawful use requirement makes sense. Surely no one wants drug cartels and mafia families registering their trademarks with the USPTO. However, the lawful use requirement does not only limit the activities of criminal organizations. In his article, Prof. Mikos cites one trademark application that was denied because, according to USPTO, the mark’s use in commerce was on cigars from Cuba, prohibited by the Cuban Assets Control Regulations. The “breathtaking array of laws outside the filed of trademark law” that USPTO has had to consider over the years includes the Amateur Sports Act and the Federal Indian Arts and Crafts Act.
At a conceptual level, this attention to non-trademark laws seems ill-placed, but the problem is far more serious. The “suggestion that the sale or transportation of goods must comport with other laws” is, as Prof. Mikos explains, “notably absent from the text of the Lanham Act. “By imposing and enforcing the lawful use requirement, USPTO is ignoring “limits on its authority to refuse registration for any reason not expressly enumerated in the [Lanham Act].”
Interpreting a statute in a way that ignores its plain language is deeply problematic. Unfortunately, what happens with the lawful use requirement is not an isolated case, as any practitioner who works with government agencies knows. As a consular officer tasked with enforcing U.S. immigration and nationality law (and later as an attorney practicing immigration law), I saw plenty of ad hoc “rulemaking,” even by junior officers, and in some cases in fragrant violation of the Constitution.
The enforcement of the lawful use requirement does not, in general, rise to that egregious level. But it is still, as Prof. Mikos describes it, an “unauthorized and unwise” practice, which has unduly inflicted harm on scores of cannabis brands and the public, as we have explained in these pages.
The USPTO is currently struggling to keep up with its workload, which has greatly picked up as the post-COVID realities of telework and greater reliance on e-commerce are reflected in business activity. This is a perfect time for the agency to revisit the Lanham Act and shed a mission it was never tasked with in the first place.