Trademark Refused, Patent Approved: Illegal Intellectual Property Explained. Episode 155

Today we're diving into a juicy and often misunderstood question in intellectual property law, Can you get a patent on something that’s illegal, and can you get a trademark registration for an illegal product or business.

Believe it or not, the answer is yes for one, and a big no for the other.

Patents and Illegality – Do They Mix?

Let’s start with patents.

You might think the USPTO would automatically reject any invention that seems unlawful, immoral, or shady. But surprisingly, that’s not how it works.

Under U.S. patent law, there is no express prohibition against granting patents for inventions that might violate federal or state law. The Patent Office cares about utility, novelty, and non-obviousness—not whether your invention might land someone in jail.

Here’s a classic example. Suppose someone invents a new type of bong that filters cannabis smoke more efficiently. Even though cannabis is a Schedule I controlled substance federally, that bong may be novel, non-obvious, and perfectly patentable.

There are hundreds of patents that relate to cannabis—everything from hydroponic systems to vape pens, to chemical extraction methods. All patented. All perfectly legal… at the Patent Office.

Now, let me give you an actual patent. If you look at U.s. Patent no. 9220294, it’s titled “methods and devices using cannabis vapors.”  It’s for a method of purifying TCH and CBD from a cannabis-containing composition, and it has various steps of heating a substance into a vapor and then condensing it to form a coating.” The patent office had no issue with this this from an illegality point of view.

Juicy Whip v. Orange Bang (1999)

Now besides a product being potentially illegal, what if your product is mean to deceive the public. Does the patent office have an issue with granting patents that deceive the public? There’s a classic case in law school textbooks about deception, and the short answer to the question is that deception has nothing to do with the legality of the patent. The case is Juicy Whip v. Orange Bang, and invention was a beverage dispenser that pretended to circulate the drink visibly but really dispensed from a hidden tank. The challenger argued it was deceptive and therefore not useful under the law. The Federal Circuit disagreed and said:

“Congress did not intend to inject a moral element into the utility requirement.”

So, the takeaway is: immorality or illegality doesn’t disqualify a patent.

As long as your invention meets the technical requirements, the USPTO is not in the business of playing judge or jury.

What a Patent Actually Does

This is a good time to clear up a common misunderstanding about what a patent actually gives you.

A patent does not give you the right to do anything. It gives you the right to exclude others from making, using, selling, or importing your invention. It’s what we call a “negative right.”

That means you could be granted a patent on an invention that you yourself cannot legally use or sell. But you can stop others from doing so—assuming they could legally do it in the first place. You can get a patent on how to activate a nuclear bomb, it doesn’t mean that you’re allowed to do it, it just means that legally, other people couldn’t use your method without infringing your patent.

But What About Trademarks?

Okay, let’s flip the coin and talk about trademarks.

If you think the same rules apply—think again. This is where it gets interesting.

While patents are about inventions, trademarks are about commerce. Specifically, lawful commerce.

Under the Lanham Act, which governs trademark registration in the U.S., a mark must be used in commerce in connection with legal goods or services to be eligible for federal registration.

And here’s the kicker: if your goods or services are illegal under federal law, your trademark application is dead on arrival—even if the same product is legal under state law.

 

Example: Cannabis Trademarks

This comes up all the time with cannabis companies. Even though marijuana is legal in states like California, Colorado, and Oregon, it’s still a Schedule I drug under the federal Controlled Substances Act.

So if you try to register a trademark for “Stoney Gummies” or “Kushy Kush Vape Pens,” the USPTO will reject the application—not because the mark is confusing or descriptive, but because you can’t legally use those goods in interstate commerce.

Here’s a quote from the USPTO’s own Examination Guide:

“The goods or services must not be illegal under federal law, regardless of whether such goods or services are lawful under state law.”

So cannabis trademarks? Not happening. At least not until federal law changes.

 

Real Trademark Refusal Example

One real example is U.S. Trademark Application Serial No. 87168058 for “Herbal Access,” which was filed for “retail store services featuring herbs.” The USPTO refused registration because the actual services involved cannabis, making the use illegal under federal law. The refusal cited the Controlled Substances Act and the requirement that goods must be legally in commerce to qualify for trademark protection. Now maybe you’re thinking, ok, well what if this place actually sells herbs like cilantro? Then you can probably get it, but the patent office is going to be looking a little bit closer at your application if it gets suspicious that you’re trying to get a trademark registered for something illegal.

Want a trademark for a psilocybin chocolate bar? Nope. Illegal drug.

How about trying to register the trademark for a company name or url for “FakeIDz.com” for counterfeit driver’s licenses? Absolutely not.

Selling pirated DVDs with a catchy brand name? Also a big no.

The rule is simple: no lawful use in commerce equals no trademark.

Why the Difference Between Patents and Trademarks?

So why this big discrepancy between patents and trademarks?

Well, it comes down to the purpose of each type of intellectual property.

Patents are about promoting innovation. The government doesn’t care what your invention does—as long as it’s new, useful, and non-obvious.

Trademarks are about protecting consumers and regulating commerce. The whole point is to identify the source of goods and services being sold legally in the marketplace.

So trademarks inherently require legal use in commerce, while patents do not.

Think of it this way: the USPTO might grant you a patent on a new kind of safe-cracking device, but you can’t start a company called “BurgleTech” and register that name for advertising criminal services.

Strategic Considerations for Gray-Area Industries

If you’re in an industry where legality is hazy—say, cannabis, gambling tech, or even cryptocurrency—you need to think strategically.

Patents can still protect your inventions, and many businesses use them as part of their long-term strategy—even while waiting for federal law to catch up.

But for trademarks, your best bet might be to register a mark for legal ancillary goods or services—like clothing or educational materials—that relate to your brand but aren’t directly tied to the illegal product.

Some cannabis brands, for instance, register trademarks for non-THC CBD products, or even just their logo on hats and t-shirts. That way, they still get some federal trademark protection, even if their core business isn’t registrable.

Also, it is one of the few cases where getting a state trademark registration makes sense. Almost all the time, state trademark registration makes no sense if you can get federal trademark registration, but for things like cannabis, you can still get a state trademark registration and then at least be able to protect your product or business name in the state, even if you don’t get all the benefits of federal trademark registration.

 

What About Copyrights?

Quick side note here—copyright also doesn’t care about legality. You can register a copyright for a manual on how to commit fraud, as long as it’s original and fixed in a tangible medium.

So really, trademark is the only IP right that directly refuses protection based on illegality.

Final Takeaways

Let’s wrap it up with a few key points.

Yes, you can patent an illegal invention. The patent office only looks at patentability, not morality or legality.

No, you can’t trademark illegal goods or services. Trademarks require lawful use in commerce.

Cannabis patents are fine; cannabis trademarks are not—at least federally.

If you’re in a legally risky industry, consider what aspects of your business you can protect, and build your IP portfolio accordingly.