Cannabis is slated to be rescheduled by the U.S. Drug Enforcement Agency, from a Schedule I substance to a Schedule III substance. This upcoming shift has been discussed in a variety of contexts, but this author has not found a discussion of the impact that this rescheduling will have on obtaining a federal trademark registration. This article will explore the framework of how cannabis companies are currently filing for trademarks, how the Controlled Substances Act fits into the framework, and then will assess the impact that the upcoming rescheduling will have on this framework.

Generally speaking, obtaining a trademark registration for your cannabis business has never been a straightforward process. One of the largest contributing factors to this is the requirement that an applicant's use in commerce be "lawful" use according to federal law. Gray v. Daffy Dan's Bargaintown, 823 F.2d 522, 526, 3 USPQ.2d 1306, 1308 (Fed. Cir. 1987); 15 U.S.C. Section1051, 1127. However, as you are likely aware, it is a violation of the federal Controlled Substances Act (CSA) to manufacture, distribute, or dispense cannabis. 21 U.S.C. Section 841. The federal illegality of these activities, which many cannabis companies actively engage in, is something that must be traversed during the trademark application drafting process.

To address this challenge, there are a number of different strategies that cannabis companies can employ to obtain federal trademark registrations. The best strategies are ones that have an eye toward future enforcement, and result in a crafting of the description of goods and/or services to enable efficient enforcement of these rights against would-be infringers. The key in drafting these descriptions is to keep the standard of trademark infringement in mind while putting the text together. In New Jersey, the test for trademark infringement is recited in Interpace Corp. v. Lapp, 721 F.2d 460 (3d Cir. 1983), which recites a 10-factor analysis (the "Lapp Factors") to be used while comparing whether two marks are confusingly similar. However, for the purposes of this article, we can reduce the analysis to just the first two Lapp Factors: (1) the similarity of the marks; and (2) the similarity of the goods/services as it is often said that one can predict the outcome of the "likelihood of confusion" analysis employed in assessing trademark infringement with 95% success just by looking at these two factors. Thus, by crafting the description of goods and/or services in an application to list goods and/or services that are lawful under federal law while still being sufficiently similar to the federally-illegal goods and/or services that a cannabis company sells, it is possible to obtain federal trademark protection that can be a viable tool in any future enforcement actions. One thing to note is that the cannabis company must actually be using the mark in commerce in the manner indicated in the trademark application, otherwise the registration will be easily invalidated and could potentially land the applicant in other kinds of trouble.