Tony Klemptner - January 26, 2021 - How to Register a Trademark, Marijuana Law, Protecting Your Trademark from Infringement, Trademark Law
With the legalization of various forms of marijuana in some states, products involving Cannabidiol (CBD) and hemp have been rapidly entering the market, and businesses are seeking to protect their brands in this growing market. Even though the United States Patent and Trademark Office (USPTO) does not currently allow federal trademark registration for goods or services that violate federal law, it does allow federal trademark registration for cannabis and cannabis-related goods and services if the use in commerce is lawful. The article provides guidance for the following questions:
Businesses in which the products or services involve the manufacture, distribution, or consumption of cannabis face an uphill battle in protecting their brands since many of these products and services are still considered illegal at the federal level under the Controlled Substances Act (“CSA”). The CSA prohibits manufacturing, distributing, dispensing, or possessing certain controlled substances, including cannabis and cannabis-based preparations. It also makes it unlawful to sell drug paraphernalia. As a result, the current policy at the USPTO is to refuse trademark applications for cannabis-based goods and services as illegal under the CSA.
Consequently, it is critical for cannabis businesses to develop a strategy early on for protecting their brands/trademarks. One approach is to obtain federal trademark registration for any lawful goods and/or services that a business is providing at this time, such as hemp and CBD products. These registrations may then be used at a later date in association with cannabis products if/when cannabis is federally legalized. The 2018 Farm Bill removed “hemp” from the CSA’s definition of marijuana, which allows cannabis plants and derivatives, such as CBD, that contain no more than 0.3% delta-9 tetrahydrocannabinol (THC) on a dry-weight basis to no longer be controlled substances under the CSA.
To date, the USPTO has granted registrations involving cannabis, and cannabis-related goods and services in multiple trademark classes for various types of federally legal goods and services, such as body oils, shampoos, lotions, creams, on-line retail store services, electronic publications, and farming services. Keep in mind that a trademark application in connection with legal goods or services may still be refused by the USPTO if these goods or services are being used with goods or services that are illegal under the CSA.
If the goods or services associated with your business fall within the definition of “hemp” products containing less than 0.3% THC, and the goods/services are compliant with other federal laws, you should develop a strategy for pursuing federal trademark registration. Keep in mind that you can seek federal trademark protection for names that you are currently using in commerce or those that you intend to use in commerce in the future to put others on constructive notice of your trademark rights.
In the states that have legalized various forms of marijuana, state trademark registrations may be possible to provide some limited protection for cannabis-related goods and/or services. However, state trademark registrations do not help in achieving in federal trademark registration with the USPTO.
The first thing that you will need to consider is whether you have a marijuana strain or a hemp strain. As noted, above, cannabis plants and derivatives that contain no more than 0.3% delta-9 tetrahydrocannabinol (THC) on a dry-weight basis are no longer considered controlled substances under the CSA.
Next, you will need to determine whether you are using a name that refers to the product itself, such as cultivar or strain, or using a trademark that distinguishes the product from other products as to its origin. One strategy may be to use a name for the cultivar/strain that is different than the brand name used to distinguish the cultivar/strain.
Also, it is crucial to conduct trademark searches of the USPTO database and the marketplace to ensure that the brand that you choose is clear to use and possibly register. In other words, you need to identify any confusingly similar trademarks that may present concerns to your ability to register and use your brand/trademark.
This is truly a case-by-case analysis of your mark/brand and the other party’s mark/brand based on several factors, such as similarity of the mark and relatedness of the goods or services. Priority of rights in a mark are based on the first to use a mark in commerce in connection with certain good or services. The other way to establish rights in a mark is through constructive use priority based on filing a trademark application on the Principal Register with the USPTO. The filing of the application provides constructive use of the mark in connection with the filed goods or services. Establishing constructive use priority is contingent on the trademark application maturing into a registration.
Due to the various legal frameworks surrounding cannabis-related trademarks on the federal and state levels, you should make sure to consult with competent trademark counsel to develop a game plan for protecting your brands. It is critical to what types of cannabis-related goods and services may be protected federally and how to prepare trademark applications to achieve such trademark protection. Where federal registration is not legally obtainable with regard to various goods or services, you may able to obtain limited state trademark registrations or common law rights to your trademarks if they are in use.