Though barriers to obtaining brand protection for cannabis-related marks are high, every cannabis business owner still must choose a name for their company and for their brand. Choosing a name and a brand that will not infringe the trademark rights of anyone else is critical, because even though your marijuana business might not be able to obtain a trademark of its own, other business owners can. And those trademark owners MUST enforce their rights if they don’t want to lose them.
So what should you be thinking about when developing your own brand? Most people are aware that they cannot use the same mark on the same goods or services as someone who already owns that trademark. A quick internet or USPTO database search can usually turn up these types of conflicts. But it’s more complicated than this. Not only can you not use a mark that is the same as a registered trademark, you cannot use a mark that is confusingly similar to a registered trademark.
The Ninth Circuit, in AMF Inc. v. Sleekcraft Boats, developed an eight-factor test for determining whether one mark is confusingly similar to another. Here are those eight factors:
- Strength of the mark;
- Proximity of the goods;
- Similarity of the marks;
- Evidence of actual confusion;
- Marketing channels used;
- Type of goods and the degree of care likely to be exercised by the purchaser;
- Defendant’s intent in selecting the mark; and
- Likelihood of expansion of the product lines.
Some of these factors are clear-cut, and some are highly subjective. The Ninth Circuit has repeatedly reaffirmed that this is a flexible test, but it is useful to consider these factors when choosing a name for your brand that may be similar to another registered mark. For example, if the other, similar mark is a well-known brand, or a household name, your risk of infringement goes up. If the goods you are selling are similar to the goods provided by the other brand, your risk goes up. Likewise, if the marks are very similar, if similar marketing channels are used, or if either company intends to expand into the market of the other, your risk of infringement goes up. You’ll notice that the court also considers the intent of the defendant. This means that if you knew from the outset that your mark was similar to a registered mark, the court is less likely to look favorably on your case.
What due diligence should you perform before adopting a brand or company name? The best way to mitigate infringement risk is to have a comprehensive clearance search performed on your proposed mark by a company that specializes in such searches and then have that search analyzed by a trademark attorney well-versed in cannabis. With this report, your cannabis trademark attorney can advise you on the level of risk you face by assuming a particular brand. Your cannabis trademark lawyer can also give you initial feedback on the strength of your proposed mark, along with tips on choosing a brand that will be protectable. The real takeaway here is that you don’t need to use the exact same mark as another company to infringe that company’s trademark. Crossing the line into infringement takes a lesser degree of similarity than most people realize, so choose your brand name wisely.
If you want to learn more about cannabis branding, cannabis trademarks, cannabis IP, and cannabis IP licensing, check out the following: