As a cannabis trademark attorney, I have been blown away by the marketing efforts of certain cannabis brands in California. Beautiful billboards on the side of the road. Eye-catching trucks. High quality reusable shopping bags.  It is clear that these cannabis companies are spending a lot on this. Time, money, and effort to create a unique and memorable brand for their marijuana business. And to not protect that work would be an utter waste!   While you still can’t file for a federal trademark registration to protect your mark for THC goods, there are ways for you to protect your brand, goods, and services.

Federal Trademark Registration for Marijuana Marks

Let’s start with what you can’t do. Then we’ll work our way into how to best protect your cannabis brand and create a strong trademark protection strategy.  As you may know, cannabis is still a federally controlled substance under the Controlled Substance Act (CSA).  Even if it is legal for you to purchase and sell marijuana for medical and/or recreational use in your city and state: it’s still federally illegal.

The Feds vowed to stay out of state affairs in regulating marijuana. However we’ll see how that changes in the next coming years.  Federal trademark registrations are obtained with the United States Patent and Trademark Office (USPTO), a government agency, and the USPTO will deny registration to any mark that violates the “lawful use rule”, as stated in Trademark Act Sections 1 and 45. Because cannabis violates the CSA, it’s an unlawful use and any trademarks that covers cannabis or byproducts of cannabis will be denied for now.

Although you cannot register a trademark for cannabis, you can register any ancillary goods or services that are not a product or byproduct of the “flower” with the USPTO.

Federal Trademark Registration for goods and services that do not touch the “flower”

If your business sells more than just marijuana products (think consulting services, helping people to find the right dosage and strands, educating others on cannabis use, brand apparel, or even an app that allows you to see nearby stores selling cannabis products), then you can obtain a federal registration for those goods and services.  

As a matter a fact, the app TÖKR which allows users to locate marijuana from nearby dispensaries was able to obtain a federal registration for various classes.  In fact, they obtained registration under class 42 for “providing software as a service (SAAS) featuring computer software platforms which enables medical and recreational marijuana dispensaries owned by others to advertise and market pricing information for such goods and which enables consumers to search for pricing and location information for such goods”, class 9 for “ application software that enables a user to locate pricing for medical marijuana and recreational marijuana from nearby dispensaries owned by others”, and class 35 for “providing internet marketing and advertising services for medical and recreational marijuana dispensaries owned by others.”

The company explained that its services are a marketing platform for medical and recreational marijuana dispensaries. It also stated that companies not owned by the applicant are to reach its clientele and patients.

State Trademark Registration for Marijuana Marks

As of January 2019, recreational marijuana is now legal in 10 states, and medical marijuana is legal in 33 states! If you’re in California and have been selling cannabis under your mark, you should file for a CA state trademark registration.  

CA trademark registrations are both cheaper and faster than USPTO registrations. However, the CA trademark registration only protects you in the state of California, but it’s still great protection and an asset to your business that is worth looking into. Registering a California Trademark or Service mark prevents others from using your name or design. It also gives you very favorable enforcement powers throughout the state. Once registered with the state, you can add the “™” or “SM” symbol after your mark to put others on notice. In California, other potential applicants are also notified of the mark once it is submitted in the state trademark database.

Lastly, a cannabis trademark registered as a California Trademark or Service mark may subject your infringer or copier to injunction; profit disgorgement; and attorney’s fees if litigation is necessary to prevent others from using your mark.

Protections available to your business without any federal or state trademark registration

In the U.S., trademark rights are based on use and not registration. If you start using your mark in commerce before anyone else in a given area; you can enforce your rights against copiers and enforcers if they start using the mark after you.  Also, there is no “lawful use” requirement to be protected at common law; as there is at federal law.

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Photo by Leander Lenzing on Unsplash