Navigating the USPTO’s Lawful Use Rule

Insights from Managing Attorney Chelsie Spencer

Intellectual property is one of the most valuable assets of a company. Yet one of the basic forms of protection, federal trademark registration under the Lanham Act, is denied to cannabis companies. Recently, the World Trademark Review published “Why the USPTO’s Lawful Use Rule is Well Past Its Prime” by managing attorney Chelsie Spencer. Spencer, a trademark attorney with significant experience in obtaining trademarks for alternative substance companies, argues that the United States Patent and Trademark Office’s (“USPTO”) Lawful Use Rule (“Rule”) is unsupported by the statutory law and negates the purpose of the Lanham Act.

Understanding the USPTO’s Lawful Use Rule

Currently, the USPTO will deny registration to any trademark that it believes violates federal law. The USPTO’s Lawful Use Rule has been applied to everything from violations of the Controlled Substances Act to Federal Insecticide, Fungicide and Rodenticide Act. According to the USPTO, lawful use in commerce means only those goods and services that do not violate federal statutes or regulations. However, as Spencer argues, the Rule has no basis in the Lanham Act.

Challenges Faced by Trademark Owners

Denial of a federal trademark makes it difficult for cannabis, hemp, or psychedelic operators to protect their brands. Registration of a trademark on the Principal Register confers several benefits to mark owners, including the right to sue for infringement in federal court. Companies denied registration under the Lawful Use Rule must resort to common law or other ancillary claims in the event of infringement, and their remedies are not yet well defined.

The Lawful Use Rule Should be Abolished.

As Spencer notes in the article, the Rule has stood unchallenged for nearly seventy years. Recent Supreme Court decisions invalidating certain statutory bases for denial of a trademark demonstrate that the current bench may be inclined to invalidate the Rule.

Adapting to Denial

At Ritter Spencer Cheng, our trademark and cannabis attorneys are used to working with rapid regulatory changes. By continually refining our strategy, we have successfully registered hundreds of trademarks for hemp, cannabis, and psychedelic companies. Brand protection is important and its up to you as a business owner to clear, monitor, protect, and enforce your mark. By staying abreast of developments, our trademark team can successfully navigate regulatory challenges to assist you with protection of your trademark.


Cannabis and trademark attorney Chelsie Spencer has been awarded numerous recognitions for her work in cannabis. She has processed numerous trademark applications for alternative substance companies across the nation. If you need assistance with registering your trademark, Contact Ritter Spencer Cheng  or give us a call at 214.295.5070.