Protecting Your Client’s Canna Brand

 Securing crucial trademark registrations for brands operating in the cannabis space has required a certain nimbleness to date, and this looks to remain true, at least in the short-term. At the federal level, the July 2016 decision of the Trademark Trial and Appeal Board (TTAB) to uphold denial of protection for a trademark used in conjunction with retail services at a Washington state dispensary (read more here) essentially preserves the operating assumption that state legalization does not equal “lawful use” in the eyes of the United States Patent and Trademark Office (USPTO).

While businesses dealing with direct cultivation/production or sales of cannabis and cannabis-containing products retain the option of seeking registrations at the state level, such protections are inherently limited. Furthermore, despite ongoing local efforts, some states (namely California, the world’s largest cannabis market) still refuse to issue state trademark registrations in strict adherence to the federal model.

So what exactly can cannabis companies do to protect their brands?

Fortunately there is still some room to maneuver under the federal regime. Choosing a strategy to employ depends largely on the specific nature of the product in question, and navigating the hurdles of the application process will require a trademark attorney with experience operating in this particular niche.

Ancillary Goods and Services

In industry parlance, these are the companies that do not “touch the plant”. This category encompasses a wide array of brands representing everything from entertainment and consulting services, to money management, transaction and investment services, as well as SaaS platforms assisting in grow monitoring, regulatory compliance and data analytics.  For these companies, staying in line with the specific language of the Controlled Substances Act (CSA), which largely informs the USPTO examiner’s decision-making process vis-à-vis “lawful use,” is relatively easy.  Such brands are generally at liberty to announce their affiliation with cannabis in the description of goods and services to better stake their claim within that market.

The category can likewise include products used directly in the cultivation or consumption of cannabis, but that also happen to be widely applicable within markets that are federally legal, such as lighting systems, fertilizers or vaporizers, to name a few. Here, the dance with the language of the CSA becomes increasingly intricate, and success in registration will depend largely on the specifics of the application, as well as on the focus of the product’s marketing and advertising. 

Related Legal Goods and Services

Enforcement of trademark rights often involves jumping the bounds of one class of goods and services into another related class. As such, gaining registration for your mark in conjunction with federally legal products provides leverage to enforce that same mark as used on related cannabis products.  Proven strategies include registering related entertainment and educational services for cannabis retailers, whereas manufacturers of consumable goods often tread the fine line between legal “hemp” and illegal “marijuana”.

But it should be noted that close can quickly become too close when dealing with related products. This fact is bolstered by the above-mentioned TTAB ruling and the federal government’s recent decision (read more here) not to reschedule cannabis under the CSA, but instead to continue waiving certain regulatory requirements and thereby encouraging researchers to conduct clinical trials authorized by the Food & Drug Administration on cannabidiol (CBD), a primary constituent of hemp.

Scrutiny of developing federal law and precedent, as well as continued diligence and caution when submitting applications remains essential. Stay informed and connected by reading attorney blogs at MJLawHub.com, particularly on cannabis trademarks.

 

 

James Marion is a California attorney specializing in intellectual property and business law in the cannabis and entertainment spaces, along with several other industries. He is the founder and principal attorney at Law Offices of James P. Marion, Esq., and a member of the National Cannabis Bar Association.

 

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