An Overview of Cannabis Trademark Laws
Trademarks offer your business exclusive rights – as well as the critical ability to protect those rights. Along with general trademarks, cannabis trademarks are mostly governed by federal law, specifically the Lanham Act. The basis for your rights under this act include the owner’s “use in commerce,” however, it must be a “legal use in commerce.”
Cannabis trademark laws can be complicated because cannabis production and sales are governed almost exclusively by the state. Yet marijuana is still a forbidden schedule 1 drug under the Controlled Substances Act. Federally, it is illegal and considered equivalent to heroin. That means selling cannabis is not a “legal use in commerce,” even though marijuana is legal under some state laws.
So, do legal marijuana, CBD, and hemp companies have no right to trademarks because of the federal cannabis prohibition? Absolutely not! Even cannabis companies are eligible for some trademark protection. Navigating the complex intersection of trademark law and cannabis law requires experience in both legal specialties. The lawyers at Gleam Law have successfully handled more cannabis trademark applications than any other law firm in the country. We have in-depth knowledge of the trademark process and the legal marijuana, CBD, and hemp market. Our cannabis trademark lawyers can work with clients from anywhere in the world and carefully craft every trademark application to seamlessly protect clients without giving the government any reason to reject the application.
Cannabis Trademark Laws for Your Business
A company’s trademark portfolio is one of their most valuable assets. Trademarks are the words, images, designs, smells, or tastes that tell consumers who created the product. For cannabis products, those 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 because your trademark rights begin as soon as you use 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 cannabis trademark lawsuit, these three presumptions will easily save you tens of thousands of dollars, and maybe more.
Many attorneys will tell you it is impossible to register a cannabis trademark with the Federal U.S. 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 apply the law to the questions in front of them. Any reference to cannabis 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 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 allow legal marijuana – including California, Oregon, Washington, and Colorado to name a few. 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 disputes against in-state competitors. Protecting a cannabis trademark at the state level in strategic jurisdictions is a smart choice for legal marijuana, CBD, and hemp brands that want to lock in their trademark rights now, even before federal legalization.
Contact our Cannabis Trademark Lawyers
At Gleam Law, our cannabis trademark lawyers have helped clients around the world 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. If you have any questions about cannabis trademark laws or would like to discuss trademark protection with one of our attorneys in Los Angeles, San Francisco, Portland or Seattle , please contact us for a free 30-minute consultation.