When planning for the launch of a cannabis-related business, trademark issues should be considered early on. Trademark searches should be conducted when selecting the business name, as well as brand names for products and services.
Failure to search a trademark might result in a nightmare situation where the business entity is formed, the website and social media accounts are created, business cards are printed, and other materials and arrangements are all set, only to then receive a cease and desist letter demanding that the business change its name. An ounce of prevention is worth a pound of cure.
After searching and clearing the business name and any proprietary product and service brands, consideration should be given to filing trademark applications for the words and/or logos. (And regarding logos, the business should discuss with its intellectual property attorney whether the necessary rights have been obtained from the logo artist.)
When reviewing the options for filing a cannabis-related trademark application, special rules are involved. At the federal level, the US Patent & Trademark Office (USPTO) will refuse a trademark application if the products or services pertain to the sale or transportation of a controlled substance or drug paraphernalia in violation of the Controlled Substances Act, 21 U.S.C. §§801-971. In addition, the USPTO will reject an application that covers certain items containing CBD, namely food and beverage products, dietary supplements, and pet treats. However, the USPTO will approve an application for non-consumable products having 0.3% THC or less (for example, a hand lotion with 0.3% THC), or for services related to such products (for example, online retail services featuring essential oils with 0.3% THC). Also note that it is possible to register a trademark for services such as “providing a website featuring information in the field of cannabis.”
A trademark owner should consider seeking federal registration for acceptable goods/services, to obtain some level of current protection, and to position itself to file a subsequent application for additional goods/services if cannabis becomes legalized under federal law.
In addition to filing a federal application for acceptable goods/services, a trademark owner should consider filing one or more state trademark applications. Unlike the USPTO, which rejects applications for dispensary services and similar goods/services, the states typically approve state trademark applications for products and services that are authorized by state law. Thus, one may find greater leeway with a state trademark application. On the other hand, state applications typically cannot be filed until actual usage of the trademark has commenced, whereas federal applications are routinely filed on an intent-to-use basis long before the launch date.
In addition to trademark issues, a business may need to consider other intellectual property issues such as Non-Disclosure Agreements, copyright protection, and even patent protection where relevant. We urge businesses that are ramping up in the cannabis industry to contact us early on to map out an action plan related to trademarks and other intellectual property.
If you have any questions regarding this LEGALcurrents, please do not hesitate to contact any member of the firm’s Cannabis Law practice group at 585.232.6500 or 716.853.1616.
Attorney Advertising. Prior results do not guarantee a similar outcome. This publication is provided as a service to clients and friends of Harter Secrest & Emery LLP. It is intended for general information purposes only and should not be considered as legal advice. The contents are neither an exhaustive discussion nor do they purport to cover all developments in the area. The reader should consult with legal counsel to determine how applicable laws relate to specific situations. ©2021 Harter Secrest & Emery LLP