Last month, I had the honor of speaking at the International Trademark Association’s Annual Meeting about the unique trademark issues faced by the cannabis industry. We’ve written extensively on the subject (see below for some of the highlights), but it’s about time for a basic refresher on trademark law and the trademark issues cannabis business owners need to be mindful of.
- Marijuana Trademarks
- Take Your Marijuana Business Nationwide With Brand Licensing
- Cannabis Franchising vs. Trademark Licensing: Get it Right or Face the Consequences
- Cannabis Apps: Protecting Your Brand on Mobile Platforms
- What Can Appellations Do For Small Cannabis?
A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. More commonly, a trademark is recognized as a brand. The importance of trademarks is two-fold: On one hand, owners of successful brands want to rest assured that other parties will not be able to use and exploit their brand without the brand-owner’s permission. But on the other, perhaps more important hand, trademarks are extremely important from a consumer protection standpoint. As a society, we want consumers to know where the goods and services they purchase are coming from, and to make informed purchasing decisions based on factors like quality and safety. And the primary way consumers are able to distinguish the goods of one company from the goods of another is via branding.
There are three ways in which a brand owner can establish trademark rights:
- By using the mark in connection with their goods or services (legally) in commerce;
- By registering the mark with the United States Patent and Trademark Office (USPTO); and
- By registering the mark with an appropriate state trademark registry.
Registering a trademark with the USPTO is the best way to protect one’s mark, but because cannabis is still illegal under federal law, and because one requirement for registration of a federal trademark is that the applicant has made “legal use” of the mark in commerce, the USPTO has continually refused to register marks for use on cannabis and any other goods and services that violate the Controlled Substances Act (CSA). Under the CSA, it is unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under the CSA.”
So how do cannabis businesses go about protecting their brands when federal trademark protection is unavailable to marks used on federally illegal goods and services? One way is to obtain registration for ancillary goods or services that do not violate the CSA. For example, if you manufacture a cannabis-infused beverage AND you produce and sell a non-infused version of that beverage, it may be possible to secure a federal trademark registration that will cover your non-infused beverages. The strategy here is to then assert a “likelihood of confusion” argument against any would-be infringers in order to prevent them from using your mark.
Another strategy we advise our clients to use is the state trademark registration process. Though the protection afforded by a state trademark is geographically limited to the state of the registration, state trademarks still provide more extensive geographic protection and legal remedies than common law rights. Common law rights can be limited to the geographic area in which you are using the mark, meaning that if you only do business in Seattle, your common law trademark rights could only protect you within the city of Seattle. And if you want to avail yourself of the statutory remedies available to trademark owners in infringement cases, you will need to register your mark.
Regardless of whether you file for federal or state trademark protection, or whether you opt to develop a brand without ever registering anything, it is critical to ensure that your brand does not infringe on the rights of any third party. A mark does not need to be exactly the same as another mark in order to infringe that mark – the standard is “confusing similarity,” which is comprised of multiple factors and is highly subjective. This is why, prior to investing in brand development, consulting a trademark attorney and obtaining a comprehensive search report on your proposed mark is key. A thorough search is necessary to establish that your brand or logo will not infringe any other trademark, whether registered or not.
As we’ve stated over and over, the federal illegality of cannabis makes brand protection and trademark law particularly complicated in this industry. Navigating state and federal trademark laws to protect your mark is possible, but requires some ingenuity.