Video blog: Trademarks and the Cannabis industry. It’s harder to register the brand of cannabis products as trademarks for several reasons. I go through those reasons and some tips for potential trademark protection for the cannabis industry.
Here is a lightly-edited transcript of the video blog:
Hi, I’m Anthony Verna, managing partner of Verna Law, P.C., a law firm focused on IP and Advertising Law.
I’m going to give you a little hypothetical. You are either growing cannabis or you’re a cannabis dispensary or you have a company that has some kind of accessories to cannabis and you want to take either the strain that you’re selling, or growing or the products that you’re making and you want to brand that and registered as a trademark.
You’re going to have a couple problems with that, however. We have a case called in re Pharmacon LLC. At which point, the Trademark Trial and Appeal Board ruled that because we have the Controlled Substances Act, a federal legislation which makes cannabis sales illegal. Even though states are legalizing the use and sale of cannabis more and more, it is still illegal under federal law. And the Trademark Act is very blatant about federally registered trademarks.
They must be in lawful use.
Therefore, the Trademark Act and this federal Controlled Substances Act basically make cannabis trademarks illegal. So if you’re in this particular industry, how are you protecting your brand as something that can be only yours? Well, number one, I would state that if you’re in the accessory business, that’s perfectly fine. Anything that’s related to cannabis would be fine as long as you forget to have any designs that relate to cannabis, no leaves.
No stating the product is related to cannabis.
If you’re in this particular business and you’re making hemp or you’re making CBD oil, well those products are fine. And, what I would say is that if you’re in those industries, take your brands and register them there. Another thought would be state trademark registrations.
Usually, I’m not a big fan of state trademark registrations because usually they’re only evidentiary in nature. At the very least in the states where this is legalized, you as a business owner can state what the brands are. Here are what we are selling. And at least in these particular states where it’s legalized, you’ll have some kind of protection there. And, of course, the business can always rely on the common law as well for trademark protection.
But that, of course, is a matter for the courts.
For actually receiving a federal registration, remember any product that’s an accessory to cannabis is perfectly fine. Just make sure you leave out the leaves, make sure you leave out the word “cannabis” at the Patent and Trademark Office.