No Trademarks for Cannabis? Not quite

Cannabis Business struggle To Trademark With USPTOheisenberg-300x150

No Trademarks for Cannabis? Not quite – Protecting your trademark is one of the most important things a new business can do. Every minute you spend on marketing increases your brand’s value, value that could be stolen by some competitor who starts using a confusingly similar name, logo, appearance, or design. The strongest way to solidify ownership over your trademark so that you can protect it from infringement is by registering it with the United States Patent and Trademark Office (USPTO). That registration process isn’t always as simple as it looks, especially for cannabis and medical marijuana businesses.

Port Townsend’s Herbal Access discovered the hard way how tricky these applications can be. Their application for trademark registration was refused because, under the federal Controlled Substances Act (CSA), selling marijuana is still illegal. They disagreed with the soft rejection and were promptly given a hard rejection. Then they appealed. Now, two years after the initial application, the USPTO’s Trademark Trial and Appeals Board (TTAB) concluded that the trademark, as depicted in the application and online, was not being used in legal commerce and  is ineligible for registration.

The legal use in commerce rule is, generally speaking, a good rule. It is designed to deny trademark protection to criminals. So, for instance, Walter White from Breaking Bad could not sue a competitor for producing identically blue meth, or from using the name “Heisenberg.” Nor could the Medellin Cartel sue a company that chose to name a product after it.  We don’t want crime to have proper trademarks because we don’t want crime to have proper branding: they’re weaker when they don’t have official status.

For the same reason, we should give intellectual property (IP) protection to cannabis: we want cannabis businesses to develop strong brands because strong brands are more accountable to consumers. Refusing IP rights handicaps some of the industry’s most responsible innovators at a time when legally responsible canna-preneurs need all the support they can get. The laws and practices established now will influence the industry for decades and change will be harder later.

Gleam Law handles a lot of trademarks for the cannabis industry and has a very high success rate. Every trademark application requires a custom approach because no one strategy will always work. Some of the roadblocks Herbal Access faced could have been avoided, but doing so requires an expert knowledge of both trademarks and the cannabis industry. Maybe we would have lost this legal battle too, but we sure would have handled the fight differently.

From the official documents, it looks like Herbal Access used an automated online website to file their application. Many applicants use these websites because they feel like it will save them money. Sometimes it does, sometimes it doesn’t. Either way, a relatively small cost savings in the very short run is a bad reason to risk fumbling the whole application.

If you have a trademark to protect, we suggest discussing your IP portfolio with an IP attorney who understands your business and is able to give your application the specific attention it requires.