As we discovered last week, the USPTO requires that marks be associated with federally lawful goods and services. Cannabis is not federally legal and as such, it is difficult to obtain a federal trademark for a cannabis brand. However, there are some strategic business ideas that could allow you to obtain federal trademark registration for your brand, and there are also other ways to protect your brand. Let’s dive into a few of them below:
1. Register your mark for anything that can be registered.
Although cannabis products have not yet been federally legalized, the USPTO does allow registration of marks used in association with hemp products and CBD products that contain no more than 0.3% of THC by weight. If you sell any such products, make sure to apply for a federal trademark registration with respect to those products.
2. Trademark your brand in relation to ancillary goods and services.
If your main product is not one that is allowed by the USPTO, think about creating secondary products that represent your brand and are lawful. For example, you could create a non-cannabis version of your cannabis gummies, or you could create t-shirts and other merchandise that represent your brand and use your mark. Doing this will allow you to register a federal trademark. Even though your main product is not explicitly protected, you will have an easier time arguing for opposition of other similar marks. You will also have an easier time proving your case if you are ever in a situation where you need to sue others for common law trademark infringement (we are going to discuss this shortly).
3. In states that have legalized cannabis, register for a state trademark.
States have their own laws and trademark registers. Currently, 19 states have legalized recreational marijuana, and 37 states have legalized medicinal marijuana. If you live in any one of these states, do apply for trademark protections in your state. Even though these trademark rights are narrower than federally registered trademark rights, any protection is better than no protection. Note that state trademarks protect your brand from other local competitors, but does not apply to the actions of companies operating in other states.
4. Finally, don’t forget about your common law trademark rights.
Trademark rights arise from simply using your mark in association with the goods and services you offer. Registration is not required for activation of your rights and your rights exist for as long as you continue to use the mark in commerce in a specific geographical area. These rights are even narrower than those afforded by state trademark registration and are similarly limited to the geographical region in which your services are offered. Make sure you monitor your mark and ensure that no one else is using it. Failure to do so can lead to a loss of your trademark infringement protection rights.
Make sure you do your due diligence and take the appropriate steps to securing and maintaining trademark protections over your brand. The extra work now can save you a lot of time, money, and energy in the future. Good luck and feel free to contact us if you have any further questions or concerns!