Cannabis Trademark Law
Cannabis Trademarks and Trademarks, in general, are mostly governed by federal law, specifically, the Lanham Act. Under the Lanham Act, trademarks used in connection to any legal commerce have certain exclusive rights, and the ability to protect those rights. The basis for those rights is the owner’s “use in commerce,” however, it must be a “legal use in commerce.”
Cannabis is still a very young industry that is dominated by small businesses spread out across the United States. Cannabis production and sales are governed almost exclusively by state laws because cannabis is still a forbidden schedule 1 drug under the Controlled Substances act. Federally, cannabis is still illegal and considered equivalent to heroin.
Therefore, selling cannabis is not a “legal use in commerce,” even though it is legal under some states’ laws. So, does federal cannabis prohibition mean that cannabis companies have no right to trademarks?
Absolutely not; even cannabis companies are eligible for some trademark protection, but navigating the complicated intersection of trademark law and cannabis law requires experience in both legal specialties.
Gleam Law has successfully handled more cannabis trademark applications than any other law firm in the country. We carefully craft every trademark application to seamlessly protect our clients without giving the government any reason to reject the application.
For a cannabis trademark, it is best to seek an expert in both trademark and cannabis law.
A company’s trademark portfolio is one of their most valuable assets. The trademarks are the words, images, designs, smells, or tastes that tell consumers who created the product. For cannabis products, trademarks include unique strain names, product names, the company name or logo, and catchphrases. Every marketing dollar you spend, and every time your sales grow, you have increased consumer awareness of your trademarks, and therefore increased the value of the mark.
Just like anything else of value in your business, your trademark needs to be protected. The best proactive step you can take to protect your brand is to register your trademarks. Registration is not required to own a trademark. Your trademark rights begin as soon as you begin using it in commerce. However, the registration will stand in court as presumptive proof that 1) you own the mark, 2) the mark is protectable, and 3) you have the exclusive right to use the trademark in commerce. If you ever find yourself in the middle of a trademark lawsuit, these three presumptions will easily save you tens of thousands of dollars, and maybe more.
Many attorneys will tell you that it is impossible to register a Cannabis trademark with the Federal US Patent and Trademark Office (“USPTO”)—but they are only half right. The key to protecting Cannabis trademarks at the Federal level is present your trademarks to the USPTO in a way that they can approve it. The Federal trademark examiners are technocrats who do nothing but apply the law to the questions in front of them. Any reference to marijuana anywhere in the application will be rejected on the grounds that there is “no lawful use in commerce” since marijuana is still illegal under the Controlled Substances Act of 1970.
Focusing your trademark applications on the legal activities that your business does on the side will lend supplemental protection for the brand on related or similar products. This “circle the wagons” strategy won’t give you direct protection of the trademark as a cannabis brand, but it will give you protection over any uses of the trademark that are likely to confuse consumers, which could include a competing Cannabis brand.
Additionally, state trademarks are available in all states that have legalized Cannabis. Each state registration applies only within the state that issued it. This limits the reach and power of the trademark, but will generally carry the same strong presumptions of ownership, validity, and exclusivity as a federal trademark in any disputes against in-state competitors. Protecting a cannabis trademark at the state level in strategic jurisdictions is a smart choice for cannabis brands that want to lock in their trademark rights now, even before federal legalization.
At Gleam Law, we have helped our clients successfully file and receive more than 100 cannabis trademark registrations at both the state and federal level. Those trademarks are company assets that could last forever and continue to grow in value in perpetuity. If you have an trademark that you’d like to protect, contact us for a free 30-minute trademark consultation.