THE STAKES HAVE NEVER BEEN HIGHER: WHY STATES SHOULD ADOPT A MODEL STATE INTENT-TO-USE TRADEMARK REGISTRATION SYSTEM TO FACILITATE THE NATIONAL EXPANSION OF THE MARIJUANA INDUSTRY

AIPLA QUARTERLY JOURNAL
Volume 46, Number 1 Page 127 Winter 2018
NOTE
THE STAKES HAVE NEVER BEEN HIGHER:
WHY STATES SHOULD ADOPT A MODEL STATE INTENT-TO-USE
TRADEMARK REGISTRATION SYSTEM TO FACILITATE THE NATIONAL
EXPANSION OF THE MARIJUANA INDUSTRY
Sarah Teitelman*
I. INTRODUCTION..........................................................................................................129
II. HISTORY OF MEDICAL-MARIJUANA LAWS IN THE UNITED STATES...........133
A. FEDERAL-MARIJUANA LAWS....................................................................133
B. WAVE OF STATE-MARIJUANA LEGALIZATION.....................................135
III. OVERVIEW OF U.S. TRADEMARK LAW.................................................................137
A. FEDERAL-TRADEMARK LAW & THE LANHAM ACT............................139
1. Use-Based Applications Under the Lanham Act ...................141
2. Intent-to-Use Applications Under the Lanham Act..............141
B. STATE-TRADEMARK LAW..........................................................................143
C. COMMON-LAW TRADEMARKS.................................................................145
D. THE UNITED STATES PATENT&TRADEMARKOFFICE’S RESPONSE TO
APPLICATIONS FOR REGISTERING TRADEMARKS RELATED TO
MARIJUANA GOODS & SERVICES.............................................................146
IV. STATES SHOULD ADOPT AMODEL STATE INTENT-TO-USETRADEMARK
REGISTRATION SYSTEMTO CREATEAQUASI-NATIONAL-TRADEMARK-
REGISTRATION REGIME...........................................................................................151
A. SCOPE OF A MODEL STATEINTENT-TO-USEREGISTRATION
SYSTEM ..........................................................................................................152
* © 2018 Sarah Teitelman. Sarah Teitelman is a third-year lawstudent at The
George Washington University LawSchool. Ms. Teitelman previously
earneda Bachelor of Science in Political Science andSociology from the
Florida State University. During law school, Ms. Teitelman has hadthe
opportunity to work as a law clerkfor SpecialOlympics International, Fox
Sports, andthe U.S. Department of Labor. She would like to thank her
parents, friends, andthe Publication Boardof the AIPLAQuarterly Journal
for their invaluable feedbackandsupport during this process.

128 AIPLA Q.J. Vol. 46:1
B. STRUCTURE OF A MODEL STATE INTENT-TO-USEREGISTRATION
SYSTEM ..........................................................................................................152
C. A MODEL STATE INTENT-TO-USE REGISTRATION SYSTEM WOULD
ENHANCE BRAND RECOGNITION IN THE GROWING MARKETFOR
TRADEMARKS FOR MARIJUANA-RELATED GOODS & SERVICES .......154
D. PREVENTING BAD-FAITH REGISTRATION IN THE MODEL STATE
INTENT-TO-USE REGISTRATION SYSTEM................................................156
V. CONCLUSION...............................................................................................................159

2018 The Stakes Have Never Been Higher 129
I. INTRODUCTION
In recent years, the state of marijuana legalization appears to be heading
in the direction of the tobacco- and alcohol-industries in terms of regulation and
wide-spread use.1 Currently, 29 states have legalized medical marijuana,2 9 of
which and the District of Columbia have legalized either the sale or possession or
both of recreational marijuana.3 This trend toward legalization reflects changing
attitudes about marijuana,with 93% ofvoters in full support of medical marijuana
in the United States.4 The normalization of marijuana has made it the fastest-
1 This Note focuses on medicalmarijuana. Thus, allreferences to marijuana,
unless otherwise specified, relate to medicalandnot recreationalmarijuana.
This Note operates off the assumption that the Rohrabacher–Blumenauer
Amendment will continue to be extendedin the federalbudget prohibiting
the DOJ from using federalfunds to prevent states from implementing their
medicalmarijuana laws. See PaulArmentano, MedicalMarijuana Protections
Extended as Part of Temporary FederalBudget Agreement, DAILY CHRONIC
(Jan. 23, 2018), http://www.thedailychronic.net/2018/89734/medical-
cannabis-protections-extended-part-short-term-federal-budget-agreement/
[https://perma.cc/B566-7XHH].
2 29 LegalMedical Marijuana Statesand DC, PROCON.ORG,
http://medicalmarijuana.procon.org/view.resource.php?resourceID=000881
[https://perma.cc/4NBJ-BM9D] (last updatedNov. 30, 2017) (listing Alaska,
Arizona, Arkansas, California, Colorado, Connecticut, Delaware, Florida,
Hawaii, Illinois, Maine, Maryland, Massachusetts, Michigan, Minnesota,
Montana, Nevada, NewHampshire, NewJersey, NewMexico, New York,
North Dakota, Ohio, Oregon, Pennsylvania, Rhode Island, Vermont,
Washington, andWest Virginia as the states that have legalizedmedical
marijuana).
3 See Melia Robinson, Here’s Where You Can Legally Smoke Weed in 2018, BUS.
INSIDER (Jan. 23, 2018, 1:46 PM), http://www.businessinsider.com/where-can-
you-can-legally-smoke-weed-2018-1/#washington-dc-10
[http://perma.cc/X9QD-SD3D] (naming Alaska, California, Colorado, Maine,
Massachusetts, Nevada, Oregon, Vermont, andWashington as the states
which have legalizedrecreationalmarijuana as of January2018).
4 See Tim Malloy & Pat Smith, Republicans Out of Step with U.S. Voters onKey
Issues, Quinnipiac University NationalPoll Finds; Most Voters Support Legalized
Marijuana, QUINNIPIAC U. (Feb. 23, 2017),
https://poll.qu.edu/images/polling/us/us02232017_U68mdxwa.pdf/
[https://perma.cc/RG2L-KBD3] (polling conductedby independent
Quinnipiac University Poll with public-opinion surveys distributedin

growing industry in the United States,5 as evidenced by North American
marijuana sales increasing 30% in 2016 for a total of $6.7 billion6, a subsequent
increase by 25% in 2017 for a total of $9 billion, and the expectation of reaching
$11 billion in 2018.7
While the current marijuana industry is dominated by small businesses
operating in individual states, large marijuana corporations are beginning to
expand into multiple states to capitalize on the growing market.8 However,
national expansion is difficult to accomplish because it is illegal to ship marijuana
products across statelines as thedrug is considered an illegal substanceunder the
Controlled Substances Act (CSA).9 As a result, only large marijuana companies
with widespread brand-name recognition have the financial resources to engage
in national expansion.10 This is because marijuana companies must contend with
Pennsylvania, NewYork, New Jersey, Connecticut, Florida, Ohio, Virginia,
Iowa, Colorado, andthroughout the nation).
5 See Matt Ferner, LegalMarijuana Is The Fastest-Growing Industry In The U.S.:
Report, HUFFINGTON POST (Jan. 26, 2015) (last updatedDec. 6, 2018),
http://www.huffingtonpost.com/2015/01/26/marijuana-industry-fastest-
growing_n_6540166.html [https://perma.cc/9CNA-UM9V] (highlighting the
explosive rate of growth of the marijuana industry in 2014, making
projections for 2015).
6 See Debra Borchardt, Marijuana Totaled $6.7 Billion In 2016, Forbes (Jan. 3,
2017, 9:00 AM),
https://www.forbes.com/sites/debraborchardt/2017/01/03/marijuana-sales-
totaled-6-7-billion-in-2016/#25fd3ef475e3 [https://perma.cc/8NCR-PAXA].
7 See Aaron Smith, The U.S. LegalMarijuana Industry Is Booming, CNN MONEY
(Jan. 31, 2018, 4:03 PM), http://money.cnn.com/2018/01/31/news/marijuana-
state-of-the-union/index.html[https://perma.cc/CTJ7-CGUD]; Jeremy Berke
& Skye Gould, This Map Shows Every StateThat Has Legalized Marijuana, BUS.
INSIDER (Jan. 23, 2018, 2:01 PM), http://www.businessinsider.com/legal-
marijuana-states-2018-1 [http://perma.cc/A5H5-BPWJ].
8 See Julie Weed, Marijuana Company Prepares to Cross State Lines, as Legally as
Possible, N.Y. Times (Nov. 9, 2016),
https://www.nytimes.com/2016/11/10/business/smallbusiness/marijuana-
company-prepares-to-cross-state-lines-as-legally-as-possible.html?_r=0
[https://perma.cc/L43R-W949].
9 See 21 U.S.C. § 812(c) sched. I(c)(10) (2012).
10 See Chris Roberts, Big Pot orNot? Colorado Companies Set Up in Massachusetts,
HIGH TIMES (Nov. 16, 2016), http://hightimes.com/business/big-pot-or-not-

each state’s unique requirements for packaging, distribution, marketing, and
residency.11 The effect has been a focus on national expansion into states that
recently legalized recreational- or medical-marijuana,12 similar to the expansion
seen in the Canadian marijuana industry.13
Marijuana companies that undergo national expansion undertake
substantial financial risks because the United States Patent and Trademark Office
(USPTO) prohibits federal-trademarkregistration for all marijuana-related goods
and services.14 As a result, marijuana businesses register their trademarks at the
state level or obtain common-law trademark rights.15 Unlike federal-trademark
law, state-trademark statutes do not include intent-to-use (ITU) applications for
trademark registration.16 An ITU application allows a business to reserve a
trademarkwhilepreparingthegood or servicefor market with theknowledgethat
colorado-companies-set-up-in-massachusetts/ [https://perma.cc/DN5M-
M6XC].
11 See Weed, supra note 8; see also Roberts, supra note 10.
12 See Weed, supra note 8; see also Roberts, supra note 10.
13 See, e.g., Jocelyn Aspa, 10 Top Canadian Cannabis Stocks, CANNABIS INVESTING
NEWS (Oct. 20, 2016), http://investingnews.com/daily/resource-
investing/agriculture-investing/cannabis-investing/canadian-cannabis-
stocks/ [https://perma.cc/7DWL-Z4AR] (finding the rise of the Canadian
cannabis-stockmarket indicates increasing demandfor recreationaland
medicinalusers); Leah Schnurr, CanadianMarijuana Companies Look to get
Creative with Brand Building, BUS. INSIDER (Dec. 16, 2016),
http://www.businessinsider.com/r-canadian-marijuana-companies-look-to-
get-creative-with-brand-building-2016-12 [http://perma.cc/4TU8-QZAY]
(finding Canadian cannabis firms are facing potentiallimits on the
advertising andpackaging of products).
14 See Rebeccah Gan, ProtectionforMarijuana Trademarks, 32 GPSOLO 72, 72
(2015); see also 15 U.S.C. § 1127 (2012); TMEP § 907 (8th ed. Apr. 2017)
(requiring the denialof a trademarkregistration whenever the markitself or
the goods associatedwith it violate federallaw).
15 See Gan, supra note 14, at 72.
16 See generally James F. Monagle, California’s Bill to Add Marijuana Trademark
and Service Mark Classifications, LEXOLOGY (Feb. 28, 2017),
http://www.lexology.com/library/detail.aspx?g=1cdb1b8f-aed9-4de2-8297-
0b9c8b555cd2 [https://perma.cc/G6ZV-QYL3] (“Many of the benefits of the
federalregistration system are unavailable at the state level, such as the
ability to file intent-to-use applications . . . .”).

no other entity will register the same trademark during this time.17 Accordingly,
marijuana businesses can only protect theirbrand signals,such as logos and brand
names, under state- and common-law after they begin operatingin a stateand use
their trademark in commerce within its borders.
Under the current state-trademark-registration scheme, if two marijuana
companies use thesametrademarkin commercein thesamestate,both companies
risk reputational harm and brand dilution by being associated with a producer of
lower quality products.18 Trademark dilution occurs when a trademark,after being
used in twodifferent contexts,no longer brings the original product to the minds
of consumers because it is associated with a second product.19 Accordingly, when
consumers see the original trademark they associate the mark with two sources
and not one, defeating the source identification function of trademarks.
Therefore, states that have legalized medical marijuana should adopt a
Model StateIntent-to-UseRegistration System (Model ITU System)to facilitatethe
national expansion ofthemarijuana industry.AModel ITU System would provide
quasi-national trademark rights and allow marijuana businesses to secure
protection for their brand signals before making substantial investments toward
expansion.20 Additionally, a Model ITU System will promote the policy of
17 See infra Section III.A.2.
18 As notedabove, the marijuana companies that engage in nationalexpansion
generally have widespreadbrand-name recognition. As such, these
trademarks may qualify as a “famous, distinctive mark” for purposes of
trademarkdilution by blurring. Cf. Starbucks Corp. v. Wolfe's Borough
Coffee, Inc., 588 F.3d97, 105 (2d Cir. 2009) (citing 15 U.S.C. § 1125(c)(2)(B)
(2012)) (“Dilution by blurring is an ‘association arising from the similarity
between a markor trade name anda famous markthat impairs the
distinctiveness of the famous mark’ . . . .”).
19 See 15 U.S.C. § 1125(c)(2)(B)–(C) (2012).
20 Others have exploredthe expansion of the state-trademark-registration
systemas a means to create semi-nationaltrademarkrights for the
marijuana industry to some degree. However, the solution proposedherein
is the first to advocate reforming the ModelState TrademarkAct to
accomplish this goal. Cf. RussellW. Jacobs, Cannabis Trademarks: A State
RegistrationConsortiumSolution, 74 WASH. &LEE L. REV. ONLINE 159, 161
(2017) (advocating for “states [to] grant registrations with presumptions of
validity, exclusive rights, andownershipto trademarks usedwith legalized
cannabis goods andservices . . . [and] offer reciprocalrecognition to each
other’s cannabis trademarkregistrations as a means of protecting against
cross-border infringements”).

trademarks servingas sourceidentifiers for goods and services and secure owners
of trademarks the goodwill associated with their brands.
This Note is organized into five parts. Part II provides background
covering the history of marijuana laws in the United States, focusing on the
interaction between federal illegality and state legalization. Part III examines the
differences between federal- and state-trademark law, and the impact of
marijuana’s legal status on the USPTO’s current registration procedures. Part IV
discusses how a Model ITU System would operate, and why this system is
necessary for theexpansion of the marijuanaindustry.Finally,Part V offers a brief
conclusion.
II. HISTORY OF MEDICAL-MARIJUANA LAWSIN THE UNITEDSTATES
Marijuana is illegal under federal law becauseit is classified as a Schedule
I narcotic under the CSA.21 This creates a conflict between federal- and state-law,
and generates confusion over whether a marijuana business in a legal state is a
permissibleenterprisethat has the same rights other businesses do. Accordingly,
it is important to understand the interplay between federal- and state-marijuana
laws to see how it affects the ability of marijuana businesses to obtain federal-
trademark registration.
A. FEDERAL-MARIJUANA LAWS
For most of U.S. history, growing and selling marijuana was legal under
both federal- and state-law.22 The Federal Government began significantly
regulatingmarijuana in 1937 when Congress passed theMarihuana Tax Act.23 The
Marihuana Tax Act imposed two taxes on marijuana: a transfer tax, and an
occupational tax on those who sold the drug.24 These taxes, along with the
21 21 U.S.C. § 812(c) sched. I(c)(10) (2012) (listing “Marihuana” as a Schedule I
narcotic).
22 MARK EDDY, CONG. RESEARCH SERV., RL33211, MEDICAL MARIJUANA: REVIEW
AND ANALYSIS OF FEDERAL AND STATE POLICIES 1 (2010) (stating that from the
1840s to 1941, marijuana was a recognizedmedicine andwas includedin the
United StatesPharmacopoeia).
23 Marihuana Tax Act of 1937, Pub. L. No. 75-238, 50 Stat. 551 (1937), invalidated
by Leary v. UnitedStates, 395 U.S. 6 (1969) (repealed1970). See Gonzales v.
Raich, 545 U.S. 1, 10–11 (2005) (discussing the historyof federal-marijuana
regulation).
24 Marihuana Tax Act §§ 2, 7; See Leary v. UnitedStates, 395 U.S. 6, 14 (1969).

burdensome administrative requirements, resulted in all medicinal marijuana
products being withdrawn from the market.25
In 1969, the Supreme Court held that the Marihuana Tax Act was
unconstitutional.26 In response, President Nixon declared a national “war on
drugs” and “asked Congress to enact legislation to combat rising levels of drug
use.”27 Shortly thereafter, Congress passed the CSA.28 The CSA’s main objectives
were to eliminate drug abuse and “to control the legitimate and illegitimate
traffic[king] [of] controlled substances.”29 Toaccomplish this goal,theCSA created
a comprehensive regulatory regime that “criminaliz[ed] the unauthorized
manufacture, distribution, dispensing, and possession of substances classified in
any of the Act’s five schedules.”30
“The CSA places substances in one of five . . . schedules ‘based on their
potential for abuse or dependence, their accepted medical use, and their accepted
safety for use under medical supervision.’”31 Schedule I is the most restrictive
schedule in terms of access and use.32 A substance is classified as Schedule I
because it “has a high potential for abuse . . . [and] has no currently accepted
medical use in treatment in the United States.”33 Drugs classified as Schedule I
include heroin, LSD, mescaline, peyote, and psilocybin.34 Drugs of abuse with
25 See Gonzales, 545 U.S. at 11 (explaining that “while the Marihuana Tax Act
did not declare the drug illegal perse, the onerous administrative
requirements, the prohibitively expensive taxes, andthe risks attendant on
compliance” practically endedthe use of marijuana as medicinalsubstance);
EDDY, supra note 22, at 2.
26 See Leary, 395 U.S. at 16.
27 EDDY, supra note 22, at 3; see also Gonzales, 545 U.S. at 10.
28 See Marin All. for Med. Marijuana v. Holder, 866 F. Supp. 2d 1142, 1146
(N.D. Cal. 2011) (discussing the history of the CSA).
29 Gonzales, 545 U.S. at 12 (citing 21 U.S.C. §§ 801(1)-(6)).
30 Marin All. ForMed. Marijuana, 866 F. Supp. 2d at 1146 (quoting Gonzales v.
Oregon, 546 U.S. 243, 250 (2006)).
31 Id. at 1146–47 (quoting Gonzales, 546 U.S. at 250); 21 U.S.C. § 812(a) (2012).
32 See 21 U.S.C. § 812(b)(1).
33 Id. § 812(b)(1)(A)–(C).
34 Id. § 812(c) sched. I(b)–(c).

recognized medical uses are assigned to Schedules II through V, depending on
their potential for abuse.35
As noted above,under theCSA marijuana and its derivatives areclassified
as Schedule I substances.36 The inclusion of marijuana on Schedule I reflects the
Federal Government’s determination that “marijuana has no currently accepted
medical use at all.”37 Therefore, the CSA makes the intentional “manufacture,
distribution, or possession of marijuana .. . a criminal offense, with the sole
exception” that marijuana may be used “as part of a Food and Drug
Administration preapproved research study.”38 The criminal liability associated
with thepossession and saleof marijuana is thesourceof conflict between current
federal- and state-controlled-substance laws.
B. WAVE OF STATE-MARIJUANA LEGALIZATION
As noted above, 29 states and the District of Columbia have legalized
marijuana in some form.39 States can statutorily createan exception for marijuana
under their own state-level-controlled-substance laws because the CSA’s
preemption provision has been interpreted to “explicitly contemplate[] a role for
the States in regulating controlled substances.”40 However, the Federal
35 21 U.S.C. § 812(b)(2)–(5), (c); EDDY, supra note 22, at 3.
36 21 U.S.C. § 812(c) sched. I(c)(10).
37 United States v. OaklandCannabis Buyers’Coop., 532 U.S. 483, 491–92
(2001) (citing 21 U.S.C. § 812(b)(1)(A)-(C)) (“Under the statute, the Attorney
Generalcouldnot put marijuana into schedule I if marijuana hadany
acceptedmedicaluse.”).
38 Gonzales v. Raich, 545 U.S. 1, 14 (2005) (citing 21 U.S.C. §§ 823(f), 841(a)(1),
844(a)).
39 See discussion of state-marijuana legalization, supra Part I.
40 Gonzales v. Oregon, 546 U.S. 243, 251 (2006); 21 U.S.C. § 903 (2012) (“No
provision of this subchapter shallbe construedas indicating an intent on the
part of the Congress to occupy the fieldin which that provision operates,
including criminalpenalties, to the exclusion of any State lawon the same
subject matter which would otherwise be within the authority of the State,
unless there is a positive conflict between thatprovision of this subchapter
andthat State lawso that the two cannot consistently standtogether.”). But
see Americans for Safe Access v. Drug Enf’t Admin., 706 F.3d 438, 440–41
(2013) (declining to characterize as arbitrary andcapricious the Drug
Enforcement Administration refusalto reschedule marijuana because “no
currently acceptedmedicaluse” exists).

Government, through the Department of Justice (DOJ), can challenge the legality
of state-marijuana laws in court.41 The DOJ can also enforce federal-drug laws
against patients,caregivers,and medical-marijuana providers;even when they are
acting in accordance with state law.42 As such, states remain free to amend their
controlled-substancelaws tolegalizeor decriminalizemarijuana,solongas it does
41 The DOJ can choose to challenge any state laws legalizing marijuana, but
under the Obama administration, it decidednot to. See, e.g., Memorandum
from David W. Ogden, Deputy Att’y Gen., Office of the Deputy Att’y Gen.,
U.S. Dep’t of Justice, to SelectedU.S. Att’ys (Oct. 19, 2009) [hereinafter
Ogden Memo]; Memorandum from James M. Cole, Deputy Att’y Gen.,
Office of the Deputy Att’y Gen., U.S. Dep’t of Justice, to All United States
Att’ys (June 29, 2011) [hereinafterCole Memo I]; Memorandum from James
M. Cole, Deputy Att’y Gen., Office of the Deputy Att’y Gen., U.S. Dep’t of
Justice, to All UnitedStates Att’ys (Aug. 19, 2013) [hereinafter Cole
Memo II].
42 See EDDY, supra note 22, at 3. Under the Obama Administration, the DOJ
issuedthree memorandums to federalprosecutors in states thatlegalized
medical- andrecreational-marijuana. Ogden Memo, supra note 41; Cole
Memo I, supra note 41; Cole Memo II, supra note 41. The memorandums
instructedfederalprosecutors to not prosecute individuals who purchase or
distribute marijuana in “clear andunambiguous compliance with existing
state laws” andinsteadfocus on prosecuting illegaldrug traffickers. See
Ogden Memo, supra note 41, at 1–2; see also Cole Memo I, supra note 41, at 1.
Cole Memo II also made clear that while marijuana remainedan illegaldrug
under the CSA, the DOJ would defer the right to challenge the legalization
laws at that time. Cole Memo II, supra note 41, at 2. In 2014 Congress
effectively endedthe prohibition of medicalmarijuana by including the
Rohrabacher–Blumenauer Amendment in the federalbudget, which
prohibitedthe DOJ from spending money to blockstate-medical-marijuana
laws. See All Information(Except Text) forH.Amdt.332 to H.R. 2578,
CONGRESS.GOV, https://www.congress.gov/amendment/114th-
congress/house-amendment/332/all-info [https://perma.cc/5XN3-M9UU]
(last visitedFeb. 11, 2018). Congress has continuously extendedthe
Rohrabacher–Blumenauer Amendment since its introduction in 2014.
Armentano, supra note 1. Under the TrumpAdministration, Attorney
GeneralJeff Sessions rescindedthe Ogden Memo, Cole MemoI, andCole
Memo II. Memorandum from Jefferson B. Sessions, III, Att’y Gen., Office of
the Att’y Gen., U.S. Dep’t of Justice, to All U.S. Att’ys (Jan. 4, 2018)
[hereinafter Sessions Memo]. However, the DOJ will not likely be able to
enforce the CSAagainst individuals for manufacturing anddistributing
marijuana untilthe Rohrabacher–Blumenauer Amendment is repealed.

not create a “positive conflict” with federal law.43 This uncertainty over whether
the Federal Government will object to state-marijuana legalization has created
numerous ancillary consequences for marijuana businesses.44
III. OVERVIEW OF U.S. TRADEMARKLAW
A trademark is “any word, name, symbol, or device, or any combination
thereof . . . used by a person . . . to identify and distinguish his or her goods . . .
from those manufactured or sold by others.”45 When drafting and amending the
Lanham Act, Congress stated that trademarks servetwogoals.46 First, trademarks
protect consumers from deception by ensuringthepublic can distinguish between
brands and be confident that thegood or servicepurchased is what they sought.47
43 See TODD GARVEY & BRIAN T. YEH, CONG. RESEARCH SERV., R43034, STATE
LEGALIZATION OF RECREATIONAL MARIJUANA: SELECTED LEGAL ISSUES 9 (2014);
accord 21 U.S.C. § 903 (“No provision of this subchapter shallbe construedas
indicating an intent on the part of the Congress to occupy the fieldin which
that provision operates, including criminalpenalties, to the exclusion of any
State lawon the same subject matter which would otherwise be within the
authority of the State, unless there is a positive conflict between that
provision of this subchapter andthat State lawso that the two cannot
consistently standtogether.”).
44 For instance, marijuana businesses are prohibitedfrom opening accounts at
banks andcredit unions, Sophie Quinton, Why Marijuana Businesses Still
Can’t Get Bank Accounts, PEW CHARITABLE TRUSTS: STATELINE (Mar. 22, 2016),
http://www.pewtrusts.org/en/research-and-
analysis/blogs/stateline/2016/03/22/why-marijuana-businesses-still-cant-get-
bank-accounts [https://perma.cc/8LKN-EFKV], prohibitedfrom gaining
protection under the bankruptcy code, Inre Rent-Rite Super Kegs West Ltd.,
484 B.R. 799, 805 (Bankr. D. Colo. 2012), have difficulty finding insurance for
their businesses, see Alex Kreitt, What WillFederal Marijuana ReformLook
Like?, 65 CASE W. RES. L. REV. 689, 695 (2015), and enforcing standard
business contracts in court, Sam Kamin, Cooperative Federalismand State
Marijuana Regulation, 85 U. COLO. L. REV. 1105, 1113 (2014) (citing Hammer v.
Today's Health Care II, CV2011-051350 (Ariz. Sup. Ct. Apr. 17, 2012)).
45 15 U.S.C. § 1127 (2012).
46 See S. Rep. No. 79-1333, at 3 (1946); see also J. THOMAS MCCARTHY, 1
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 2:2 (5th ed. 2017)
[hereinafter 1 MCCARTHY ON TRADEMARKS].
47 See S. Rep. No. 79-1333, at 3 (1946)); see also 1 MCCARTHY ON TRADEMARKS,
supra note 46, § 2.2.

Second, trademark law protects the investment trademark owners make in
developing their goods and services.48
For these reasons,trademarks arevaluabletoowners becausethey secure
them “thegoodwill of his business”by providing them the exclusive rights touse
a mark that consumers recognize.49 This in turn reduces consumer-search costs
and allows consumers to distinguish among competing brands when deciding
what goods or services to purchase.50 Additionally, trademarks requireowners to
maintain a consistent quality in their goods and services over time and across
consumers in order tomaintain their reputations.51 Therefore,by actingas a source
identifier, trademarks promise a consistent level of quality, which helps the
consumer decide whether to purchase a particular good or service.52
48 See S. Rep. No. 79-1333, at 3 (1946)); see also 1 MCCARTHY ON TRADEMARKS,
supra note 46, § 2.2.
49 Park ’N Fly, Inc. v. Dollar Park& Fly, Inc., 469 U.S. 189, 198 (1985). See also
Sean K. Clancy, Branded Bud or Generic Ganja? Trademarks forMarijuana in
Washington, 18 LEWIS & CLARK L. REV. 1063, 1070 (2014).
50 See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163–64 (1995); Park ’N
Fly, Inc., 469 U.S. at 198; Clancy, supra note 49, at 1070–71 (“Trademarklaw’s
identifying anddistinguishing functions are valuable to a merchant because
they allow her to distinguish her goods from those soldby others. If a
merchant cannot distinguish her goods in the marketplace, then satisfied
consumers have no easy way of finding that merchant’s goods again for
repeat purchases. Meaningfulcompetition does not exist in an
undifferentiatedmarket because every unbrandedproduct appears the
same. Without trademarks, merchants have no reliable mechanismfor
standing out and therefore have less incentive to produce goods of
consistent quality.”); William M. Landes &RichardA. Posner, Trademark
Law: An Economic Perspective, 30 J.L. &ECON. 265, 269 (1987) (“In short, a
trademarkconveys information that allows the consumer to say to himself, ‘I
neednot investigate the attributes of the brandI am about to purchase
because the trademarkis a shorthandway of telling me that the attributes
are the same as that of the brandI enjoyedearlier.’”).
51 See Park ’N Fly, Inc., 469 U.S. at 198 (“Nationalprotection of trademarks is
desirable, Congress concluded, because trademarks foster competition and
the maintenance of quality by securing to the producer the benefits of good
reputation.”) (internalcitation omitted); Landes &Posner, supra note 50, at
269.
52 See Qualitex Co., 514 U.S. at 163–64 (“[T]rademarklaw, by preventing others
from copying a source-identifying mark, ‘reduces the customer's costs of
shopping and making purchasing decisions,’for it quickly andeasily

The United States has a two-tiered system of trademark registration:
federal and state.53 Federal-trademarklaw does not preempt state-trademarklaw
becausethe remedies for both arecumulative.54 Under this dual system,a business
seeking to register its trademark(s) may file applications for both state- and
federal-trademark registration.55 However, trademark registration at each level
provides owners different rights and benefits.
A. FEDERAL-TRADEMARK LAW &THE LANHAM ACT
The current federal-trademarksystem was created in 1946 when Congress
passed the Lanham Act.56 Although trademarks werehistorically governed at the
state level, Congress determined that governance should occur at the national
level because a state-level-trademark-registration system resulted in “a piecemeal
approach” that caused “a person’s right [in] a trademark in one State [to] differ
widely from the rights which that person enjoys in another.”57 The House
Committee on Trademarks and Patents determined that this approach was
inconsistent with the needs of operating a business in a national economy and
advocated passing “national legislation along national lines to secure to the
assures a potentialcustomer that this item — the item with this mark — is
made by the same producer as other similarly markeditems that he or she
liked (or disliked) in the past.”) (internalcitations omitted); 1 MCCARTHY ON
TRADEMARKS, supra note 46, § 2:3.
53 State Trademark Registrationinthe United States, INT’L TRADEMARK ASS’N,
http://www.inta.org/TrademarkBasics/FactSheets/Pages/StateTrademarkReg
istrationsUSFactSheet.aspx [https://perma.cc/VPF2-BSVZ] (last updatedJuly
2014) [hereinafter INTA State Registration].
54 See Int’l Order of Job's Daughters v. Lindeburg &Co., 633 F.2d 912, 916
(9th Cir. 1980); Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d 1260, 1264 (5th Cir.
1975) (stating that in the absence of federalregistration of a trademarkstate
law controls infringement andunfair competition claims).
55 INTA State Registration, supra note 53.
56 See Lanham Act, Pub. L. No. 79-498, 60 Stat. 427 (1946) (codifiedin scattered
sections of 15 U.S.C.).
57 Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 782 (1992) (citing H.R.
Rep. No. 76–944, at 4 (1939)); see also Park 'N Fly, Inc. v. Dollar Park & Fly,
Inc., 469 U.S. 189, 193 (1985) (understanding that the oldfederal-trademark-
registration system“reflectedthe viewthat protection of trademarks was a
matter of state concern”).

owners of trademarks in interstate commerce definite rights.”58 Essentially,
Congress believed that a state-regulated-trademarksystem did not accomplish the
goals of trademark law because it produced inconsistent results, which is
incompatible with a national economy.59
Under the Lanham Act, a trademark owner has the exclusive right to
register its mark with the USPTO.60 Many trademark owners are incentivized to
register their trademarks at the federal level because “[t]he Lanham Act confers
important legal rights and benefits on trademark owners who register their
marks.”61 Trademark rights develop through use of the mark in commerce, not
solely from theadoption or appropriation ofthemark.62 As such, when registering
58 Two Pesos, Inc., 505 U.S. at 782 (quoting H.R. Rep. No. 76–944, at 4 (1939)).
59 Id. (quoting H.R. Rep. No. 76-944, at 4 (1939)) (“The House Committee on
Trademarks andPatents, recognizing that ‘trade is no longer local, but . . .
national,’sawthe needfor ‘nationallegislation along nationallines [to]
secur[e] to the owners of trademarks in interstate commerce definite
rights.’”) (alterations in original).
60 See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162 (1995).
61 B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1300 (2015)
(internalquotation omitted). These important legalrights andbenefits
include:
(1) constructive notice of the registrant's claim of ownership of
the trademark; (2) prima facie evidence of validity of the
registration . . . and [the] exclusive right to use the mark in
commerce . . . ; (3) the possibility that, after five years,
registration will become incontestable andconstitute conclusive
evidence of the registrant's right to use the mark; (4) the right to
request customs officials to bar the importation of goods bearing
infringing trademarks; (5) the right to institute trademark
actions in federal courts without regard to diversity of
citizenshipor the amount in controversy; and(6) treble damage
actions against infringing trademarks and other remedies.
Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439, 454 (E.D. Va. 2015)
(citing 15 U.S.C. § 1125(a) (2012)).
62 See Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d 1260, 1264–65 (5th Cir. 1975).

trademarks applicants can file applications based either on use- or ITU-in-
commerce.63
1. Use-Based Applications Under the Lanham Act
After a trademarkowner has used its mark in commerce, it can file a use-
based application showing that the mark was used “[i]n commerce on or in
connection with all goods and services listed.”64 The application must include a
statement that the trademark was used in commerce, the date of first use, and a
drawing of the mark.65 The type of use necessary to secure registration must be
considered the “normal” kind of use-in-commercespecific to that industry.66 The
use must also be substantial,not sporadic, and “reflect a continual effort to create
a viable business in the goods so marked.”67 If a trademark examiner finds no
grounds for refusal and a third party does not file an opposition proceeding, the
trademarkwill be registered with the USPTO and a certificateof registration will
issue.68
2. Intent-to-Use Applications Under the Lanham Act
The Trademark Law Revision Act of 1998 (Revision Act) substantially
changed the federal-registration system by eliminating the custom of reserving
rights in a trademark through a token use-in-commerce.69 The Revision Act
63 White v. Paramount Pictures Corp., Nos. 96-1096, 90-130, 1997 WL76957,
at *2 (Fed. Cir. Feb. 21, 1997) (“Under the current law, applicants for
registration can file either basedon use or intent to use the mark.”).
64 TMEP, supra note 14, § 901; 15 U.S.C. § 1051(a) (2012).
65 See TMEP, supra note 14, § 901.
66 White, 1997 WL 76957, at *3 (quoting S. Rep. No. 100-515, at 44–45 (1988))
(“The [Senate Judiciary] committee intends that the reviseddefinition of ‘use
in commerce’be interpretedto mean commercialuse which is typicalin a
particular industry.”) (alterations in original).
67 Id. (citations omitted).
68 15 U.S.C. §§ 1062(a), 1063(b).
69 See ZazuDesigns v. L'Oreal, S.A., 979 F.2d 499, 503 (7th Cir. 1992)
(explaining that the degree of use necessary to support federalregistration
pre-ITUregistration was the token-use regime whereby slight sales plus
notice in the registersubstitutes for substantialsales without notice); see also
White, 1997 WL 76957, at *2 (finding ITU registration provides protection
during the start-upperiodmaking token-use rule unnecessary).

accomplished this by amending the Lanham Act to include registration based on
an ITU a mark in commerce.70 The rationale behind Congress’s decision to have
both use-based and ITU applications for federal-trademarkregistration wasthata
purely use-based system impaired the ability of citizens and businesses to
introduce new products and services to the market.71
Congress alsofound influential in their decision to createITU applications
the fact that every other developed country adopted an ITU system for trademark
registration 72 As such,ITU applications address theproblem ofinvestingtimeand
money in a trademark and racing “to the marketplace to establish the exclusive
right to a mark” by allowing parties to temporarily reserve a trademark before
actual use-in-commerce.73
When filing an ITU application, the trademark owner must show they
have a bona fide, or good faith, intent to use the markin commerce.74 To establish
a bona fide intent, the applicant must produceobjectiveevidence that as of the date
the application was filed, he or she intends to use the markin commerce.75 This is
typically accomplished through a verified statement declaring the applicant has
thegood-faith intent tousethe markin commerce.76 If an applicant fails toprovide
documentary evidence showing it has taken good-faith steps to use a trademark
70 TrademarkLawRevision Act of 1998, Pub. L. No. 100-667, § 103, 102 Stat.
3935, 3935–36 (1988) (“A person who has a bona fide intention, under
circumstances showing the goodfaith of such person, to use a trademarkin
commerce may apply to register the trademarkunder this Act on the
principal register . . . .”).
71 See S. Rep. No. 100-515, at 5.
72 Id. (explaining “it [was] not in the interests of the business community to
force businesspeople to use a markbefore its protection couldbe assured”).
73 See ZazuDesigns, 979 F.2d at 503; S. Rep. No. 100–515, at 5 (stating the
Lanham Act’s use requirement “create[d] unnecessary legaluncertainty for a
U.S. business planning to introduce products or services into the
marketplace. It simply has no assurance that after selecting andadopting a
mark, andpossibly making a sizable investment in packaging, advertising
andmarketing, it will not learn that its use of the markinfringes the rights
another acquiredthrough earlier use. In an age of national, if not global,
marketing, this has a chilling effect on business investment.”).
74 15 U.S.C. § 1051(b) (2012); TMEP, supra note 14, § 901.
75 SmithKline BeechamCorp. v. Omnisource DDS, LLC, 97 U.S.P.Q.2d(BNA)
1300, 1304 (T.T.A.B. 2010).
76 TMEP, supra note 14, § 806.01(b).

in commerce, then the registration will be refused on the grounds it constitutes a
bad-faith intent to reserve the trademark.77
If a trademark examiner determines an applicant has the requisite bona
fide intent and no opposition is filed by a third party, the USPTO will issue the
applicant a notice of allowance.78 A notice of allowance notifies an applicant that the
application has survived the opposition period, not that the trademark has been
registered.79 An applicant has six months after a noticeofallowanceissues toeither
use the mark in commerce or request an extension.80 After the applicant uses the
trademarkin commerce, he or she must file a statement-of-usewith the USPTO.81
If theexaminer accepts the statement-of-use,then thetrademarkwill beregistered
with the USPTO and a certificate of registration will issue.82 If the applicant does
not submit a statement-of-useor request an extension,the USPTO will classify the
trademark registration as abandoned and no registration will issue.83
B. STATE-TRADEMARK LAW
As opposed to federal registration, state-trademark law functions as a
purely use-based system.Therights and protections a trademarkowner has under
statelaw varies from statetostate.84 However,most states haveadopted theModel
State Trademark Act (Model Act), patterned after the Lanham Act, which brings
some uniformity to statelaws.85 While states are not required to adopt the Model
77 See SmithKline Beecham, 97 U.S.P.Q.2dat 1305.
78 15 U.S.C. § 1063(b).
79 Trademarks — What Happens Next?, USPTO,
https://www.uspto.gov/trademarks-getting-started/trademark-
basics/trademarks-what-happens-next [https://perma.cc/9L9P-T8JT] (last
updatedJan. 10, 2017, 3:55 PM).
80 15 U.S.C. § 1051(d).
81 Id. § 1051(d)(1).
82 Id. § 1051(d)(1).
83. Id. § 1051(d)(4).
84 See INTA State Registration, supra note 53 (stating the different ways that state
registration may serve as prima facie evidence in some states).
85 See In re Tam, 785 F.3d 567, 576–77 (Fed. Cir. 2015) (describing the history
behindthe ModelAct andits impact on state protection); INTA State
Registration, supra note 53 (noting that the ModelState TrademarkBill was
preparedin 1949 by the UnitedStates TrademarkAssociation andrenamed
the InternationalTrademarkAssociation (INTA) in 1993); J. THOMAS

Act, almost all 50 states haveadopted the Model Act intotheir trademarkcodes in
whole or in part.86
Because states donot uniformly adopt theModel Act in full, the forms and
filling authority for trademarkregistrations varyby state.87 However,themajority
of state trademark registrations are typically overseen by the state’s secretary of
state,and all 50 states requirea mark be used in commerce before registration can
be sought.88 Therefore, applications for all state-trademarkregistrations requirea
showing that a trademark is used in intrastate commerce before registration can
be granted.89 This reflects the Model Act’s omission of ITU provisions because the
drafters concluded ITU applications may create confusion among the states.90
The Model Act also differs from the Lanham Act because it contains no
lawful use-in-commercerequirement for trademarkregistration.91 California is the
only state that has adopted the Model Act and legalized marijuana to refuse
registration for trademarks related to marijuana, because its laws require
compliance with federal trademark law.92 However, the California Secretary of
State lifted this ban and began accepting trademark registrations for marijuana
goods and services on January 1, 2018. 93 And now, no statethat has adopted the
MCCARTHY, 3 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 22:5
(5th ed. 2017) [hereinafter 3 MCCARTHY ON TRADEMARKS] (noting that the
ModelState TrademarkBill was rewritten andrenamedthe ModelState
TrademarkAct in 1964 and has been subsequently updatedin 1992, 1996,
and2007). See generally What is INTA?, INT’L TRADEMARK ASS’N,
http://www.inta.org/About/Pages/Overview.aspx [https://perma.cc/N4RQ-
8BTG] (last visitedFeb. 11, 2018) (stating that INTA is a globalassociation of
trademarkowners andprofessionals that advocate for the advancement of
trademarkrights).
86 3 MCCARTHY ON TRADEMARKS, supra note 85, § 22:5.
87 See INTA State Registration, supra note 53.
88 See id.
89 See id.
90 See Monagle, supra note 16.
91 See 3 MCCARTHY ON TRADEMARKS, supra note 85, § 22:5.
92 See Monagle, supra note 16.
93 Alison Malsbury, California Cannabis: Trademarks Available January 1st, HARRIS
BRICKEN: CANNA L. BLOG (Dec. 27, 2017),
https://www.cannalawblog.com/california-cannabis-trademarks-available-
january-1st/ [https://perma.cc/V359-U34K].

Model Act and legalized marijuana bars registration of trademarks related to
marijuana on the basis of marijuana’s classification as a Schedule I substance.94
While federal registration grants the owner nationwide rights, state
registration only provides rights within the borders of that one state.95 State-
trademark registration vests the owner the right to file suit under state law and
puts an official date on the trademark registration.96 Both sources of trademark
registration provideowners with distinct rights;however,federal-trademarklaw
provides themost expansiveand lucrativebenefits becauseit grants thetrademark
holder the sole right to use their trademark in all 50 states .97 Thus, “[b]rands are
generally valued higher when federal registration is secured.”98
C. COMMON-LAW TRADEMARKS
Businesses can also obtain trademark rights without registering their
trademarks at common law.99 Using a trademark in commerce without prior
registration vests the trademark holder with common-law-trademark rights in a
94 See generally id.
95 See UNITED STATES PATENT AND TRADEMARK OFFICE, PROTECTING YOUR
TRADEMARK BASIC FACTS ABOUT TRADEMARKS: ENHANCING YOUR RIGHTS
THROUGH FEDERAL REGISTRATION 11 (2014), available at
https://www.uspto.gov/sites/default/files/trademarks/basics/BasicFacts.pdf
[https://perma.cc/CT8T-VEPZ].
96 Trademark, Branding, and Cannabis, MOSS L.: STICKY ICKY LEGAL BLOG,
http://www.stickyicky.legal/sticky-icky-legal-blog/2016/10/12/trademarks-
branding-and-cannabis [https://perma.cc/T5J6-YF3N] (last visitedFeb. 11,
2018).
97 See PROTECTING YOUR TRADEMARK, supra note 95, at 11 (“[O]wning a federal
trademarkregistration on the PrincipalRegister provides a number of
significant advantages over common lawrights alone, including . . . your
exclusive right to use the marknationwide . . . (whereas a state registration
only provides rights within the borders of that one state, andcommon law
rights exist only for the specific area where the markis used) . . . .”).
98 Gan, supra note 14, at 72.
99 Matalv. Tam, 137 S. Ct. 1744, 1751 (2017) (“Federallawdoes not create
trademarks. . . . Trademarks andtheir precursors have ancient origins, and
trademarks were protectedat common lawandin equity at the time of the
founding of our country.”) (quotations andcitations omitted).

given market.100 The common-law-trademark holder’s right to exclusively use a
trademark is “limited to areas where [the mark] had been used and the claimant
of the mark had carried on business.”101 The scope of common-law-trademark
rights is limited because trademarks are scarce resources and such a system
ensures a trademarkowner does not preempt use of a trademarkin “markets that
[the owner’s] trade has never reached.”102 The limited protections common-law
trademarks offer prompts businesses to seek either state- or federal-trademark
registrations.103
D. THE UNITED STATES PATENT&TRADEMARKOFFICE’S RESPONSE TO
APPLICATIONS FOR REGISTERING TRADEMARKS RELATED TO
MARIJUANA GOODS &SERVICES
To qualify for federal-trademarkregistration,any good or servicethat the
markis used on or in connection with must not beillegal under federal law.104 The
USPTO’s rationale is that valid use of a trademark in commerce requires lawful
commercial use.105 The USPTO invokes this legality requirement to deny
100 See Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439, 453 (E.D. Va. 2015)
(“Regardless of whether a markis registered, the right to a particular mark
grows out of its use, not its mere adoption.”) (quotations andcitations
omitted).
101 Emergency One, Inc. v. Am. Fire Eagle Engine Co., 332 F.3d 264, 268 (4th Cir.
2003) (quoting Armand’s Subway, Inc. v. Doctor’s Assocs., Inc. 604 F.2d849,
849 (4th Cir. 1979)) (alteration in original).
102 Id. at 269 (quoting Hanover StarMilling Co. v. Metcalf, 240 U.S. 403, 416
(1916)) (alteration in original).
103 See Common Law Trademark Rights, MANDOUR & ASSOCS.,
https://www.mandourlaw.com/common-law-trademark-rights/
[https://perma.cc/F8YW-LHZD] (last visitedMar. 7, 2018) (“[H]aving a
federally registeredtrademarkwith the USPTO's principalregister gives a
trademarkowner considerably more protection [than common-law
trademarkrights]. Registration creates a presumption of ownershipandlets
the public know that the registrant owns the trademarkandhas exclusive
right to use the trademarkthroughout the U.S. andin connection with goods
or services listedin the registration. Registrants may also take action against
infringement, obtain foreign registration, andprevent importation of
potentially infringing foreign goods.”).
104 See In re Morgan Brown, 119 U.S.P.Q.2d (BNA) 1350, 1351 (T.T.A.B. 2016).
105 See In re Midwest Tennis & TrackCo., 29 U.S.P.Q.2d (BNA) 1386, 1386 n.2
(T.T.A.B. 1993) (“It is settledthat the TrademarkAct's requirement of ‘use in

trademark applications for marijuana-related goods and services because it
determined that these marks “subsist in illegal activity,” as the CSA prohibits
manufacturing, distributing, dispensing, or possessing marijuana.106 Therefore,
trademarks attached tomarijuana-related goods and services cannot beregistered
with the USPTO and obtain national protection.
In April 2010, the USPTO temporarily changed its policy to signal it was
open to registering medical-marijuana trademarks by addinga new classification
in theAcceptable Identification of Goods and Services Manual specifically for “medical
marijuana, and consumable products infused with medical marijuana.”107 To be
eligible for trademarkregistration,the USPTO required “a product must be legal
for interstate trade, not violate international trade agreements and be in ongoing
commercial use.”108 The USPTO received more than 250 marijuana-related
trademark applications after it created the new trademark classification.109 These
applications included: business names such as BUDTRADER; psychoactivesodas
entitled KEEF COLA and CANNA COLA; and marijuana-strain names like MAUI
WOWIE and CHRONIC.110 Three months later in July 2010, the USPTO reversed
its decision by stating it was a mistake to consider registering a trademark for
marijuana goods and services,that notrademarkhad been granted under the new
classification, and that it was “highly unlikely” for a marijuana trademark to be
granted in the future.111
The Trademark Trial and Appeal Board (TTAB) has issued three
precedential opinions that reaffirm the USPTO’s current treatment of marijuana-
commerce,’means a ‘lawful use in commerce,’and[that the sale or] the
shipment of goods in violation of [a] federalstatute . . . may not be
recognizedas the basis for establishing trademarkrights.” (quoting Clorox
Co. v. Armour-Dial, Inc., 214 U.S.P.Q. (BNA) 850, 851 (T.T.A.B. 1982)).
106 Monagle, supra note 16.
107 Id. (citation omitted).
108 Justin Scheck, Patent Office Raises High Hopes, ThenSnuffs Them Out: Short-
Lived Trademark Category forMarijuana Is Nipped in the Bud, WALL ST. J.
(July 19, 2010),
http://www.wsj.com/articles/SB100014240527487046826045753687836871294
88 [https://perma.cc/7L84-JL7S].
109 See id.
110 Id.
111 See Gan, supra note 14, at 72.

trademarkapplications.112 All three decisions find that trademarks for marijuana-
related goods and services cannot be granted because the sale of such goods and
services is illegal under the CSA.113 In the first decision, In re Morgan Brown, the
USPTO refused registration for the trademark Herbal Access for “retail store
services featuring herbs” because the herbs being sold included marijuana.114 The
TTAB affirmed the USPTO’s decision rejectingarguments based on thelegality of
marijuana under state law, emphasizing that “the fact that the provision of a
product or service may be lawful within a state is irrelevant to the question of
federal registration when it is unlawful under federal law.”115 Accordingly,so long
as marijuana remains illegal under the CSA, the TTAB declared that trademarks
used on or in connection with marijuana cannot satisfy the lawful use-in-
commerce requirement for federal trademark protection.116
In the second decision, In re JJ206, LLC, DBA JuJu Joints, the TTAB upheld
theUSPTO’s decision torefuse registration for thetrademarks Powered by JuJu and
JuJu Joints.117 The TTAB determined the applicant lacked the bone fide intent to
lawfully use the trademarks in commerce because the marks were used in
connection with marijuanavaporizingdevices.118 In doing so the TTAB reaffirmed
Morgan Brown, holding that “where the identified goods are illegal under the
federal [CSA], the applicant cannot use its mark in lawful commerce.”119 As such,
the TTAB asserted that “‘it is a legal impossibility’ for the applicant to have the
requisite bona fide intent to use the mark” because the vaporizers are used in
connection with marijuana.120 Finally, in the third decision In re Pharmacann LLC,
the TTAB affirmed the refusal of the service marks Pharmacann and Pharmacannis
because the“‘retail storeservices featuringmedical marijuana’and ‘dispensing of
pharmaceuticals featuring medical marijuana,’ involve per se violations of the
112 In re JJ206, LLC, DBA JuJuJoints, 120 U.S.P.Q.2d(BNA) 1568 (T.T.A.B. 2016);
In re Morgan Brown, 119 U.S.P.Q.2d (BNA) 1350 (T.T.A.B. 2016).
113 See In re Pharmacann LLC, 123 U.S.P.Q.2d (BNA) 1122, 1124–25 (T.T.A.B.
2017); JJ206, 120 U.S.P.Q.2d at 1569; MorganBrown, 119 U.S.P.Q.2dat 1353.
114 See MorganBrown, 119 U.S.P.Q.2d at 1352–53.
115 Id. at 1351.
116 See id.
117 JJ206, 120 U.S.P.Q.2d at 1572.
118 See id. at 1569.
119 Id.
120 See id.

CSA.”121 In reaching this conclusion, the TTAB discussed the implications of
federal non-enforcement of the CSA on the status of marijuana legality.Thecourt
explained that theDOJ’s non-enforcement of the CSA in states that havelegalized
marijuana is temporary and subject tochangedepending on which political party
controls the Government.122 Additionally, the TTAB found it was significant that
Congress did not reschedule marijuana and only restricted the DOJ’s ability to
prosecute individuals, because possession of marijuana with intent to distribute
remains illegal under the CSA.123 As a result, the TTAB held that an applicant for
marijuana goods and services “cannot use its mark in lawful commerce, and it is
a legal impossibility for [it] to have the requisite bona fide intent to use the
mark.”124
Morgan Brown, Juju Joints, and Pharmacann indicate that trademarks used
or intended-to-be-used in connection with marijuana-related goods and services
cannot obtain federal-trademarkregistration until marijuana is rescheduled.125 In
121 In re Pharmacann LLC, 123 U.S.P.Q.2d (BNA) 1122, 1127 (T.T.A.B. 2017).
122 See id. at 1127 (“Congress couldrestore funding tomorrow, a year from now,
or four years from now, andthe government couldthen prosecute
individuals who committedoffenses while the government lackedfunding.
Moreover, a newpresident will be electedsoon, anda newadministration
could shift enforcement priorities to place greater emphasis on prosecuting
marijuana offenses.”).
123 See id. (emphasizing that the CSAdoes not provide immunity from
prosecution andanyone who possesses, manufactures, or distributes
marijuana for medicalor recreation purposes is stillcommitting a federal
crime).
124 See id. at 1128 (quoting JJ206, 120 U.S.P.Q.2d at 1569).
125 See, e.g., In re Ultra Trimmer, L.L.C., No. 86479070, 2016 WL 7385764, at *2
(T.T.A.B. Nov. 29, 2016) (using both Morgan Brown and Juju Joints as
precedent for affirming the refusalto register ULTRATRIMMER trademark
because the goods usedin connection with the markwere drug
paraphernalia andillegalunder the CSA). See generally 21 C.F.R. § 1308
(2016) (showing that marijuana is currently a schedule I drug); Clarificationof
the New Drug Code (7350) forMarijuana Extract, DRUG ENFORCEMENT ADMIN.,
https://www.deadiversion.usdoj.gov/schedules/marijuana/m_extract_7350.h
tml [https://perma.cc/6DC9-RFZ5] (last visitedDec. 20, 2017) (noting that the
Final Rule did not adda new substance to the schedule that was not already
controlledanddid not change the schedule of any substance). Additionally,
in response to the DEAissuing a FinalRule in December2016 and
clarification in May 2017 finding the CSAdoes not make cannabidiol(CBD)
products presumptively illegal, the USPTO doubleddown on their position

themeantime, thelack of federal registration has resulted in marijuana companies
registeringtheir trademarks in the statethey operate in to protect their brands,126
or relyingon common-law-trademarkprotection.127 However,state- and common-
law trademarks provide inadequate solutions for large marijuana corporations
seeking to expand because both are geographically limited. These geographic
limitations operatein conflict with theneeds of operatinga business in therapidly
expanding marijuana market.128
finding that the “newdefinition of marijuana extract has been interpretedto
include CBD,” which violates the lawful use-in-commerce requirement. See
Christiane Schuman Campbell, What theUSPTO’s New Stance onCannabidiol
Means forCBD Product Trademark Seekers, CANNABIS BUS. TIMES (Dec. 5, 2017),
http://www.cannabisbusinesstimes.com/article/what-uspto-new-stance-on-
cannabidiol-means-for-trademark-seekers/ [https://perma.cc/95TE-ECHR]
(“The Office has notedthat, because ‘CBDexists in only trace amounts in the
two primary portions of the Cannabis plant which is excludedfrom the
[CSA] definition of marijuana, namely the mature stalks andseeds,’that
products comprisedprimarily of CBD necessarily must come from the
flowering tops or leaves of the plant. If the CBDis derivedfrom the
flowering tops or leaves of the plant, it will be consideredas being within
the CSAdefinition of marijuana. If an applicant cannot or will not verify the
source of the CBDexcludes it from the CSAdefinition of ‘marijuana,’the
application will be rejectedas violating the CSA. Recently, the Office has
even gone so far as to rejectapplications that coverCBDliquids and lotions
because the Office claims that a product comprisedprimarily of CBD cannot
possibly be derivedfrom those parts of the plant that contain only trace
amounts of CBD.”).
126 See Hilary Bricken, Dude, Where’s My Marijuana Trademark?, ABOVE L.
(Mar. 9, 2015 4:20 PM), http://abovethelaw.com/2015/03/dude-wheres-my-
marijuana-trademark/ [http://perma.cc/S5XQ-6G4G] (noting that state
trademarkregistration has benefits, which include providing notice to others
that the markis claimed, andprovide greater protection in the cannabis
market than common lawdoes).
127 See Oliver Herzfeld& JaredMermelstein, Protecting Cannabis Brand Names,
FORBES (Mar. 17, 2017 9:32 AM),
https://www.forbes.com/sites/oliverherzfeld/2017/03/17/protecting-cannabis-
brand-names/#ca74b4c19dc8 [https://perma.cc/5FGH-CYSS] (highlighting
the benefits of state trademarkprotection to include statutory remedies and
protection of brandnames).
128 See id. (showing that state-trademarkprotection andcommon-lawprotection
are geographically limited); John Schroyer, Yearin Review: New Marijuana
Markets, Booming Rec Sales and Banking Retreat, MARIJUANA BUS. DAILY

Thus, to facilitate the expansion of marijuana companies and create a
national-marijuana market, states should amend their trademark laws to include
ITU applications. This reinforces the dual goals of trademark law because it
permits marijuana businesses to differentiate themselves in a saturated market,
and ensures their brand signals serve as effective source indicators by allowing
consumers to make informed decisions.
IV. STATES SHOULD ADOPT AMODEL STATE INTENT-TO-USETRADEMARK
REGISTRATION SYSTEMTO CREATEAQUASI-NATIONAL-TRADEMARK-
REGISTRATION REGIME
As previously mentioned, the marijuana industry is dominated by small,
regional businesses that grow and sell their own marijuana-related goods and
services in stores they own.129 However, as states continue to legalize the sale of
marijuana, the market for these goods and services is becoming larger. If a
marijuana company wantstoexpand intoa state that recently legalized marijuana
and obtain a state trademark therein, it must comply with the state’s marijuana
laws and intrastateuse-in-commercerequirement for trademarkregistration.130 As
a result, marijuana companies must invest time and money manufacturing their
products and developing their brands beforethey can apply toregister trademarks
for their goods and services. This process was explicitly condemned as
nonfunctional by Congress because it does not provide companies notice of prior
use when preparing goods and services for market.131
Accordingly, states that have legalized medical marijuana should amend
their trademark laws to include a Model ITU System to facilitate the national
expansion of marijuana businesses because the USPTO is unwilling to register
trademarks related to marijuana.132 Because trademarks for marijuana-related
(Dec. 31, 2015), https://mjbizdaily.com/year-review-new-marijuana-markets-
booming-rec-sales-banking-retreat/ [https://perma.cc/ZL6R-2ASD]
(illustrating the emergence of the legalizedcannabis industry across state
lines andinternationally, andhighlighting the major financialinvestments in
this new market).
129 Lester Black, LegalWeed Isn’t the BoonSmallBusinesses Thought It Would Be,
FIVETHIRTYEIGHT (Dec. 29, 2017), https://fivethirtyeight.com/features/legal-
weed-isnt-the-boon-small-businesses-thought-it-would-be/
[https://perma.cc/J9HA-L6DL].
130 See discussion supra Section II.B.
131 See discussion supra Section III.A.
132 See discussion supra Section III.D.

goods and services areonly served by statelaw,ITU registration would providea
quasi-national registration system that Congress has already determined as
necessary to conduct business in a national economy.133
A. SCOPE OF A MODEL STATEINTENT-TO-USEREGISTRATION SYSTEM
A Model ITU System would require an applicant to file ITU applications
in each individual statehe or she seeks registration in. Any business operating in
any market would be able to utilize ITU applications. However, this registration
system provides themost lucrativebenefits for industries unabletoobtain federal-
trademark registration. To obtain national rights under a Model ITU System, the
lawful business would have to file ITU applications in each individual state it
wishes to expand into.134 It would be impractical for a lawful business to seek
national protection through a Model ITU System because it can save time and
money by filing one trademark application with the USPTO. Accordingly, this
Note focuses on the requirements marijuana businesses must comply with to
obtain state-trademark registration under a Model ITU System.
B. STRUCTURE OF A MODEL STATE INTENT-TO-USEREGISTRATION
SYSTEM
A Model ITU System would be grounded in federal law because the
Lanham Act is the paramount sourceof trademarklaw in the United States.135 As
such, the registration procedure contained in a Model ITU System would mirror
the federal ITU-registration system136 and proceed in similar fashion. First, a
marijuana business would file an ITU application in the state or states where
registration is sought. This application would contain: (1) a standard form that
would be accepted in every state; (2) a declaration of ITU that includes evidence
of a marijuana company’s business license or business license application; and
(3) a copy of thecompany’s licensingagreement or corporatecharter oftheir semi-
independent subsidiary.
All applications would be filed with the state’s respective secretary of
state, who would examine the application to determine whether registration is
proper. The secretary of state would be the appropriate entity to review ITU
133 See discussion supra Section III.A.2.
134 See discussion supra Section III.B.
135 See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 782 n.16 (1992)
(Stevens, J., concurring).
136 See supra Section III.A.2.

applications because applications for state-trademark registrations are currently
overseen by that state’s secretary of state.137 Each secretary of state could then
assign the application toan examining attorney.Theoffice of the secretary ofstate
would have one month to review the application upon receipt.138 An application
could be denied for a variety of reasons, including, but not limited to, the
trademark being generic, disparaging, or likely to confuse consumers. If the
examining attorney or secretary of statedetermines that the trademarkis eligible
for registration, the application would be published for a 30-day-opposition
period. During this time, residents could file an objection citingspecific reasons to
deny registration; for example, that the mark is likely to confuse consumers.
If no opposition is filed within 30 days, or if the opposition is found
meritless, the examining attorney or secretary of state would issue a notice of
allowance. An applicant must then commence use of the trademark and file a
statement-of-usewiththeofficeof thesecretary ofstatewithin six months after the
notice of allowanceissues. If an applicant cannot meet this deadline, an extension
could then be sought by filing a request with the office of the secretary of state.
The request must be accompanied by a verified statement that theapplicant has a
continued, bona fide intent to use the trademark in commerce.139 This deadline
could be extended for a maximum of two years, until the date the state allows
medical marijuana sales tobegin,or until thestategrantsthebusinessits license —
whichever of these three options is shorter.140
After the applicant uses the trademark in commerce, they would file a
statement-of-use with the office of the secretary of state. The examining attorney
or secretary of state would have one month to review the statement-of-use to
determine whether registration could be granted.141 If the examining attorney or
secretary of state concludes that registration should be granted, a registration
certificate would be issued to the applicant. The registration certificate would
137 See INTA State Registration, supra note 53.
138 See, e.g., Section1(b) Timeline: ApplicationBased onIntent to Use, USPTO,
https://www.uspto.gov/trademark/trademark-timelines/section-1b-timeline-
application-based-intent-use [https://perma.cc/PF5D-T5VY] (last updated
Aug. 21, 2015) (explaining USPTO trademarkexaminers take, on average,
one month to reviewtrademarkapplications).
139 See 15 U.S.C § 1051(d)(2) (2012).
140 Cf. id. (showing a maximum two-year extension is appropriate because the
USPTO will grant extensions “for periods aggregating not more than 24
months”).
141 See Section1(b) Timeline, supra note 138.

establish priority-of-useand thedate of the application.If an applicant fails to use
the mark or request an extension, the application would be deemed abandoned
and registration would not issue.
C. A MODEL STATE INTENT-TO-USE REGISTRATION SYSTEM WOULD
ENHANCE BRAND RECOGNITION IN THE GROWING MARKETFOR
TRADEMARKS FOR MARIJUANA-RELATEDGOODS &SERVICES
Companies consider trademarks valuableassets because they are “one of
the visible mediums by which the [companies] good will is identified, bought,
sold, and known to the public.”142 A typical struggle companies face is how to
utilize this goodwill and create a brand that will stand apart from competition in
today’s hyper-competitive business environment.143 Strong brands develop
through continuous investment and cultivation, and provide companies
numerous benefits.144 These benefits include, among others, name recognition by
consumers, consumer loyalty, brand awareness among potential buyers,
credibility, and an increase in the perceived quality and value of the branded
products.145 The result of these investments and goodwill is that consumers will
pay a premium to purchase branded products over generic products.146 These
market principles also exist in the marijuana industry, where increasing
competition among marijuana companies has resulted in the need for companies
to brand themselves to communicate clear messages and better differentiate
themselves from each other.147
As a result,since2015 marijuana companies havebegun heavily investing
in their brands.148 Branding has mainly been seen in companies specializing in
142 Coca-Cola Bottling Co. v. Coca-Cola Co., 269 F. 796, 806 (D. Del. 1920)
(citation omitted).
143 Dallan F. Flake, Image is Everything: Corporate Branding and Religious
Accommodationinthe Workplace, 163 U. PA. L. REV. 699, 720 (2015).
144 Herzfeld& Mermelstein, supra note 127.
145 Id.
146 See id.
147 Id.
148 See John Schroyer, A Look Ahead: Marijuana Retail, Cultivation& Industry
Trends to Watch in2016, MARIJUANA BUS. DAILY (Jan. 5, 2016),
https://mjbizdaily.com/looking-ahead-marijuana-retail-cultivation-industry-
trends-watch-2016/ [https://perma.cc/QX9T-2CPU].

edible marijuana products.149 Major marijuana-edibles companies such as Kiva
Confections, Dixie Brands, Zasps, and Varavo have all made significant
investments toattract and maintain consumers through distinctiveand appealing
product-packagingdesigns.150 Moreover, in Canada, wherecompanies can register
trademarks for marijuana-related goods and services and advertise their
products,151 medical-marijuana companies have built brand presences by
marketing and selling their products to specific consumer bases.152
With 95% of the United States population living in legal-marijuana
states,153 it is important for marijuana companies to garner substantial brand
recognition immediately after a state legalizes the drug to attract and maintain
consumers.154 However, marijuana companies havea more difficult timeutilizing
their brand’s goodwill because they cannot prevent competitors from copying
their brandingin states wherethey are not operational since state-trademarklaw
only allows used based applications. If another marijuana company is using the
same brand-image or -name in a different state as a marijuana company looking
to expand into that state, breaking into that market becomes substantially more
difficult. If a marijuana company uses thesamebrandingas its competitor, then it
will not retain the goodwill and positive reputation associated with its mark it
149 See ChadRubin, The Untapped Potentialof Marijuana in E-Commerce, LINKEDIN
(Mar. 31, 2017), https://www.linkedin.com/pulse/untapped-potential-
marijuana-e-commerce-chad-rubin/ [https://perma.cc/7LLP-BWR7].
150 See Schroyer, supra note 148.
151 Sunny Freeman, Licensed Marijuana Producers Lobbying Government to Allow
Pot Advertising in Hazy New Legislation, FINANCIAL POST (Apr. 14, 2017),
http://business.financialpost.com/investing/marijuana-stocks-lose-ground-
as-new-federal-government-legislation-remains-hazy-on-details
[https://perma.cc/6H2R-PJ4T]; Tyler C. Berg, DavidH. Takagawa &Jennifer
A. Marles, Is a Marijuana IP Gold Rush Coming to Canada?, OWEN WIGGS (June
20, 2016), http://www.patentable.com/marijuana-ip-gold-rush-coming-
canada/ [https://perma.cc/2XB3-TWHU].
152 See Schnurr, supra note 13.
153 See Did You Know? 95% of the U.S. Population Lives in States With Legal
Marijuana Access, NEW FRONTIER DATA (Mar. 1, 2017),
https://newfrontierdata.com/wp-content/uploads/2015/11/MJ-by-the-
numbers-FINAL.pdf [https://perma.cc/3CAZ-VX43] (“95% of the U.S.
population lives in a state where there is some form of legalcannabis . . . .”) .
154 See Rubin, supra note 149, at 4 (explaining the “immense value” that creating
andestablishing a brandhas for success in the marijuana industry during
the “uptick” in the industry occurring due to legalization).

acquired in the stateof incorporation becauseconsumers will think it is merely a
copy. The harm associated with this consumer confusion is often categorized as
irreparable because it is nearly impossible to calculate a monetary value for
reputational damage.155
A Model ITU System would circumvent this issue by allowingmarijuana
companies to temporarily reserve the rights in specific trademarks before use in
commerce in that state. By providing notice of an ITU the mark in intrastate
commerce, marijuana companies could avoid making substantial investments in
their expansion efforts only to have another company use their branding and
marks in commerce first.
Additionally, this would prevent consumers from being confused about
thesource of a product becausethebrand signals on theproduct packaging would
be associated with a single company. By reducing the likelihood of confusion in
the marketplace, marijuana companies would be able to retain the goodwill
associated with their trademarks and potentially expand their consumer bases if
they produce quality products and generate consumer loyalty.Moreover, having
a Model ITU System based in federal law would facilitate granting federal-
trademark registrations in the future if Congress changes the legal status of
marijuana because the USPTO would have evidence and dates corresponding to
an applicant using their trademark in interstate commerce.
D. PREVENTING BAD-FAITH REGISTRATION IN THE MODEL STATE
INTENT-TO-USEREGISTRATION SYSTEM
The requirements contained in a Model ITU System would protect against
bad-faith registrations because the applicant would be required to establish a
good-faith attempt to use a mark in intrastate commerce. When drafting the
Lanham Act, Congress recognized that “a registration system based on intent also
carries some potential for abuse” because “[a] single business or individual
might . . . attempt tomonopolizea vast number ofpotential marks on thebasis o[f]
a mere statement of intent to use the marks in the future.”156 Accordingly,
applicants must produce objective evidence that, at the time the application is
filed, the “intent to use the markwas firm and not merely intent toreserve a right
155 See, e.g., ProcessedPlastic Co. v. WarnerCommc'ns.', 675 F.2d852, 858
(7th Cir. 1982) (“It is generally recognizedin trademarkinfringement cases
that (1) there is not adequate remedy at lawto redress infringement and
(2) infringement by its nature causes irreparable harm.”); accord Tally-Ho,
Inc. v. Coast Cmty. College Dist., 889 F.2d 1018, 1029 (11th Cir. 1989).
156 S. Rep. No. 100-515, at 6 (1988).

in the mark.”157 Congress included safeguards to illuminatethe requisite intent to
prevent abusingtheITU system.158 Because this Model ITU System is based off the
federal ITU regime, it would also include safeguards to ensurethe applicant has a
firm intent to use the mark in commerce.
The first threeprotections incorporated intothisModel ITU System would
bethestatement-of-use,time,and opposition-period requirements.The statement-
of-use prevents bad-faith attempts to reserve a trademark because it requires the
applicant to use the trademark in commerce before registration is granted. As
such, even if the applicant wereapplyingfor registration in bad faith,the attempt
would be thwarted because their application would be abandoned when the
trademark was not used in commerce. Second, requiring a trademark to be used
within six months ofreceivinga noticeofapproval prevents bad-faith registrations
because if an applicant fails to use the trademark in commerce during that time,
theapplication would beabandoned.Third, havingan opposition period whereby
individuals can provide evidence of an applicant’s bad faith would assist
examiningattorneys and thesecretaryofstatein identifyingbad-faith-registration
attempts.
Finally,requiringa marijuana companytosubmit a declaration of ITUthat
includes a business licenseand a copy of either thecompany’s licensingagreement
or corporatecharter of the semi-independent subsidiary would cut down on bad-
faith registrations. To support a good-faith ITU application, the applicant must
produce objective evidence that as of the date the application was filed, the
applicant intends to use the mark in commerce.159 Use-in-commerce has been
interpreted to require the “use be in the ordinary course of trade, and not made
merely to reserve a right in a mark.”160 Accordingly, the evidence must
demonstrate that the applicant was developing a business plan to use the
157 See M.Z. Berger &Co. v. Swatch AG, 787 F.3d 1368, 1376 (Fed. Cir. 2015).
158 See 15 U.S.C. § 1051(d) (2012) (explaining the requirement of timely
verification that a trademarkis actually being usedafterit has been allowed
by the USPTO).
159 See SmithKline Beecham Corp. v. Omnisource DDS, LLC, 97 U.S.P.Q.2d
(BNA) 1300, 1304 (T.T.A.B. 2010).
160 Commodore Elec. Ltd. v. Cbm Kabushiki Kaisha, 26 U.S.P.Q.2d (BNA) 1503,
1507 (T.T.A.B. 1993) (internalcitation omitted).

trademarkon or in connection with their goods or services that is consistent with
the norms in a specific industry.161
A licensing agreement and business license provide objectiveevidence of
a bona fide intent to use the mark in commerce for two reasons. First, a business
license is necessary to operate a company in the state. Second, to circumvent
federal criminal penalties associated with transporting marijuana across state
lines, marijuana businesses either enter into licensing agreements with marijuana
producers in the stateof expansion,or createsemi-independent subsidiaries in the
state of expansion.162 As such, a licensing agreement and business license are the
primary means ofexpansion for marijuana companies,and would beunnecessary
toobtain ifthecompany did not intend touse its markin commerce.Finally,courts
have previously found that the existence of a licensing agreement and business
plans are evidence of a bona fide ITU the trademark in commerce.163
161 Cf. SmithKline Beecham, 97 U.S.P.Q.2d at 1305 (holding applicant was unable
to show a bona fide intention to use the markin commerce because it
submittedno documentary evidence).
162 See Roberts, supra note 10.
163 See SmithKline Beecham, 97 U.S.P.Q.2dat 1304 (finding the applicant lacks the
bona fide intent to use the AQUAJETT trademarkin commerce because
“applicant has no plans relating to manufacture, licensing, marketing or use
of the mark. . . [and] the recordis devoidof any evidence such as
manufacturing efforts, licensing efforts, test marketing, correspondence with
prospective license[e]s, preparation of marketing plans or business plans,
creation of labels, marketing or promotionalmaterials, andthe like.”);
Honda Motor Co., Ltd. v. Winkelmann, 90 U.S.P.Q.2d (BNA) 1660, 1662,
1664 (T.T.A.B. 2009); L.C. Licensing, Inc. v. Berman, 86 U.S.P.Q.2d(BNA)
1883, 1892 (T.T.A.B. 2008) (denying trademarkregistration because of lackof
a bona fide intent to use the markbecause “Applicant’s decision to forgo a
business modeluntilafter the opposition is decideddoes not explain his
failure to have any documents whatsoever at the time the application was
filed that showedan intent to use the mark. . . . The mere assertion of an
intent to use the markwithout corroboration of any sort, whether
documentary or otherwise, is not likely to provide credible evidence to
establish a bona fide intention to use the mark”); Lane Ltd. v. Jackson Int’l
Trading Co., 33 U.S.P.Q.2d(BNA) 1351, 1356 (T.T.A.B. 1994) (“Applicant's
evidence pertaining to the formulation andimplementation of its business
plan andlicensing program constitutes credible, objective corroboration of
its statementin the application that it hada bona fide intention to use the
markin commerce on tobacco.”).

V. CONCLUSION
The USPTO has made clear that until Congress or a relevant federal
agency reschedules marijuana, trademark registrations attached to marijuana-
related goods and services will not be granted.164 But it is highly unlikely the
federal legal status of marijuana will change in the future,165 which means states
will remain the primary source of law and regulatory authority for marijuana-
trademark laws.166 However, the current state-trademark-registration regime is
inadequate to meet the needs of the marijuana industry because the Model Act,
which shapes state-trademark law, follows a use-based-trademark-registration
system.
A Model ITU System would provide a solution that could facilitate the
national expansion of the marijuanaindustryby allowingmarijuanacompanies to
temporarily reserve the rights to marks in states they wish to expand into. This
would allow marijuana companies to expand into new markets without fear of
brand and reputational damage, and facilitate the registration of federal
trademarks related tomarijuana in thefuture. For thereasons stated above, states
that have legalized medical marijuana should adopt a Model ITU System to
facilitatethe national expansion of themarijuana industrybecauseit would allow
companies to protect their brands before making substantial investments toward
expansion, and promote the policy of trademarks servingas source identifiers for
consumers on distinct goods and services.
164 See supra Section III.D.
165 See supra note 42 andaccompanying text.
166 Cf. Avantika Chilkoti, States Keep Saying Yes to Marijuana Use. Now Comes the
FederalNo., N.Y. TIMES (July 15, 2017),
https://www.nytimes.com/2017/07/15/us/politics/marijuana-laws-state-
federal.html[http://perma.cc/P6QG-9N8A] (“Marijuana merchants are
protectedby a provision in the federalbudget that prohibits the Justice
Department from spending money to blockstate laws that allowmedicinal
cannabis.”).

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