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That's a tricky question; can you get trademark protection for your cannabis business brand, logo or product?
Technically, from the Federal level, which is the registering branch of government for trademarks, the trademark must be used "lawfully" in commerce. Obviously, cannabis is still illegal on the federal level. So what are cannabis business owners supposed to do? Is a cannabis trademark possible?
In short, yes.
The current belief among many cannabis entreprenuers and business owners is that they cannot brand or protect the brands they use for their cannabis products and related services. This belief is based off the United States Patent and Trademark Office (USPTO) requirements that all trademarks must be "lawfully used in commerce."
While cannabis is still considered "unlawful" at the federal level, it does NOT mean that you cannot obtain federal trademark protection for you cannabis brand. A cannabis trademark is still possible!
There are ways to secure trademarks that can increase the value of a cannabis license and the business that holds it. You just have to have a strong trademark strategy in place.
Trademark owners can establish their trademark rights in the following four ways:
1. Federal Trademark Protection Under the Principal Register:
The principal register with the USPTO is reserved for the most unique trademarks. A unique trademark can be a made-up word like “Nike” or “Xerox”, or it can be a word that’s very common in the English language, but is being used in a context separate from where the word originated from, like “Apple” for computers, or “Amazon” for online shopping.
Registering a trademark under the principal register with the USPTO creates the broadest rights as it presumes you are the exclusive owner of that trademark in all 50 states. Because cannabis, however, is still a Schedule I controlled substance under federal law and because the USPTO will not register a trademark if the applicant cannot show lawful use of the trademark in commerce, it is difficult to secure federal registration for a cannabis-related mark.
Done correctly, however, you can secure federal trademark protection for products used under the same brand name that do not contain or facilitate the use of controlled substances.
2. Federal Trademark Protection Under the Supplemental Register:
For all trademarks that do not meet the “unique” requirement that the principal register requires, they will be placed on the USPTO’s supplemental register. If the trademark is too descriptive or generic in describing what your goods or services offer, the principal register will reject the trademark application for being “too descriptive” and place the trademark on the supplemental register.
The supplemental register provides less protection than the principal register but more protection than state registered trademarks and common law rights. While a trademark on the supplemental register does not grant the presumption of federal ownership like the principal register does, it still prevents competing trademarks from getting federal trademark protection if their mark is similar to yours.
Since the cannabis industry is still in its infancy, the USPTO is still trying to figure out which words are deemed “descriptive” versus “unique.” The cannabis space is filled with some of the most creative groups of people who are all enthusiastic and passionate about what they do.
If you find yourself with a unique logo or a catchy brand name, obtaining a trademark can preserve that uniqueness.
3. State Trademark Registration:
In the states that have legalized cannabis, one of the best ways to protect your trademarks for cannabis-related goods is to register the trademark with the state's registry.
State registered trademarks offer more protection to brand owners than common law rights. Additionally, cannabis brand owners would be wise to register state cannabis trademarks after doing a trademark search in the state to ensure that their brand will not infringe on any other trademark already in use.
4. Common Law Rights via First Use:
Unregistered trademarks are still afforded some protections under the common law and under the Lanham Act, 15 U.S.C. §§1051 et seq. Just by using the trademark in connection with a good or service in commerce creates what is known as "common law" rights.
This website is for informational purposes only. Using this site or communicating with SKB Law's Trademark Legal Team through this site does not form an attorney/client relationship. This site is legal advertising.
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