Does Your Cannabis Business Qualify for Trademark Protection? The Answer is Most Certainly “Yes!”

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cannabis trademark

We
try
to
cover
cannabis-related
trademark
issues
thoroughly
on
this
blog,
because
branding
and
trademark
protection
form
the
most
basic
foundation
for
most
businesses.
In
our
most
recent
posts,
we’ve
focused
heavily
on
trademark
disputes,
because
as
the
industry
matures,
litigation
has
become
inevitable.
For
reference,
you
can
check
out
some
of
the
big
trademark
disputes
from
the
last
couple
of
years
here:

But
what
we
haven’t
done
recently
is
a
recap
of
the
trademark
basics
for
cannabis
companies,
as
well
as
a
rundown
on
the
updates
regarding
what
products
are
and
aren’t
eligible
for
protection.
There
have
been
some
positive
changes
in
the
last
year
with
the
implementation
of
the
2018
Farm
Bill

the
USPTO
released
updated
guidance
regarding
the
registration
of
hemp-related
trademarks,
which
can
be
found

here
.

I’ll
give
a
brief
overview
of
the
cannabis
trademark
landscape,
but
at
this
point,
I
think
it’s
safe
to
say
that
nearly
every
cannabis
company
has
at
least

something

that
should
be
the
basis
for
obtaining
trademark
protection.

Trademarks
101:
A

trademark

is
a
word,
phrase,
symbol,
and/or
design
that
identifies
and
distinguishes
the
source
of
the
goods
of
one
party
from
those
of
others.
More
commonly,
a
trademark
is
recognized
as
a
brand.
The
importance
of
trademarks
is
two-fold:
On
one
hand,
owners
of
successful
brands
want
to
rest
assured
that
other
parties
will
not
be
able
to
use
and
exploit
their
brand
without
the
brand-owner’s
permission.
But
on
the
other,
perhaps
more
important
hand,
trademarks
are
crucial
from
a
consumer
protection
standpoint.
As
a
society,
we
want
consumers
to
know
where
the
goods
and
services
they
purchase
are
coming
from,
and
to
make
informed
purchasing
decisions
based
on
factors
like
quality
and
safety.
The
primary
way
consumers
are
able
to
distinguish
the
goods
of
one
company
from
the
goods
of
another
is
via
branding.

There
are
three
ways
in
which
a
brand
owner
can
establish
trademark
rights:

  1. By
    using
    the
    mark
    in
    connection
    with
    their
    goods
    or
    services
    (legally)
    in
    commerce;
  2. By
    registering
    the
    mark
    with
    the
    United
    States
    Patent
    and
    Trademark
    Office
    (USPTO);
    and
  3. By
    registering
    the
    mark
    with
    an
    appropriate
    state
    trademark
    registry.

Registering
a
trademark
with
the
USPTO
is
the
best
way
to
protect
one’s
mark,
but
because
cannabis
is
still
illegal
under
federal
law,
and
because
one
requirement
for
registration
of
a
federal
trademark
is
that
the
applicant
has
made
“legal
use”
of
the
mark
in
commerce,
the
USPTO
has
continually
refused
to
register
marks
for
use
on
cannabis
and
any
other
goods
and
services
that
violate
the
Controlled
Substances
Act
(CSA).

The
crux
of
the
analysis
for
any
cannabis
company’s
federal
trademark
eligibility
is
whether
or
not
the
company
sells
goods
or
offers
services
that
comply
with
federal
law.
To
the
extent
that
it
does,
those
goods
or
services
are
likely
eligible
for
trademark
protection.
In
addition,
to
the
extent
that
a
company
is
selling
products
that
comply
with
both
the
Controlled
Substances
Act
(CSA)

and

the
Food
Drug
and
Cosmetic
Act
(FDCA),
those
products
are
likely
eligible
as
well.
For
example,
while
the
FDA
maintains
that
CBD

cannot
be
added
to
food
products

without
violating
the
FDCA,
its
position
on
CBD
in
topical
products
is

quite
different
.
Those
products,
as
long
as
they
comply
with
the
2018
Farm
Bill,
are
likely
eligible
for
trademark
protection.
Likewise,
certain
hemp
products
are
Generally
Recognized
As
Safe
(GRAS)
by
the
FDA

these
products,
including
hemp
seed
oil,
for
example,
are
also
eligible
for
federal
trademark
protection.

For
products
that
do
not
meet
the
threshold
for
federal
trademark
protection,
there’s
a
good
chance
that
state
protection
is
available.
Though
the
protection
afforded
by
a
state
trademark
is
geographically
limited
to
the
state
of
the
registration
(and
sometimes
just
the
area
of
use
within
that
state),
state
trademarks
usually
provide
more
extensive
geographic
protection
and
legal
remedies
than
common
law
rights.
Common
law
rights
are
almost
always
limited
to
the
geographic
area
in
which
you
are
using
the
mark,
meaning
that
if
you
only
do
business
in
San
Francisco,
your
common
law
trademark
rights
could
only
protect
you
within
the
city
of
San
Francisco.
And
if
you
want
to
avail
yourself
of
the
statutory
remedies
available
to
trademark
owners
in
infringement
cases,
you
will
need
to
register
your
mark.

While
trademark
protection
in
the
cannabis
industry
still
presents
challenges
for
business
owners,
the
law
is
in
constant
flux,
and
opportunities
are
beginning
to
emerge.
If
you
haven’t
worked
with
your
cannabis
intellectual
property
lawyer
to
develop
a
strategy
for
protecting
your
trademarks
now
and
going
forward,
now
is
the
time
to
do
so.

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