As a semi-permanent solution to this problem, Jacobs proposes what he calls a “State Registration Consortium” among states where marijuana is legal. The legislation necessary to create this consortium would have the following features:
- A system to easily identify cannabis marks on the state registries, not by eliminating state use of the USPTO’s classification regime, but by adding an “M” to cannabis registration numbers, which will help marijuana businesses acting in good faith to identify conflicting marks and instead develop unique branding.
- Additional presumptions of validity, ownership and exclusive statewide rights for cannabis marks. This will allow marijuana business to invest in developing goodwill without fear of intrastate and interstate competitors using the same mark.
- Reciprocal recognition of state trademark registrations among participating states (similar to international reciprocity). A home-state registration would be valid in other participating states, and block the opportunistic adoption of marks by goodwill free riders.
- The combination of reciprocal recognition and presumptions of ownership and exclusive rights across states would require a means for the owners of prior rights in any “member” state to object to a “State Registration Consortium” registration, similar to an opposition proceeding brought before the TTAB. Jacobs suggests a voluntary arbitration system to fill that function.
- A “bad faith” provision preventing registrants in states inside the consortium from trying to benefit from the goodwill of business outside the consortium.
- A grandfather provision to protect common law rights developed before the existence of the consortium. This provision would in some cases permit multiple businesses to maintain concurrent rights to the same mark in different jurisdictions.