Diego Pellicer has curated a selection of high-end brands such as Gold Leaf Gardens’ hand-rolled cannabis cigars (bottom right) and a wide range of other cannabis and glass products (bottom left).
As long as marijuana (or “marihuana” as it is spelled in the official text) remains a Schedule I drug and illegal federally, getting a trademark for a cannabis business remains a major challenge as the United States Patent and Trademark Office requires “lawful use in commerce” for all registered marks.
While individual states may allow the sale and use of cannabis within their borders, calling it “legal” is something of a misnomer, according to trademark attorney Kieran Doyle with the New York City law firm Cowan, Liebowitz & Latman (www.cll.com).
Doyle counsels clients regarding trademark clearance, registration, prosecution, licensing and protection. He litigates intellectual property and product labeling matters in federal and state courts and represents brand owners before the Trademark Trial and Appeal Board.
“The Controlled Substances Act is still the law of the land,” Doyle says, meaning no trademarks can be issued for products still prohibited under the act.
But according to Doyle, there are other ways to protect your business’s name and trademark in the future.
“You don’t have to register a trademark to get trademark protection,” Doyle says, pointing out six ways to protect your mark without registering through the federal government:
- Common Law usage
Once you’ve selected your mark and made sure no one else has received trademark protection on it, begin using it. By using it in commerce as a source provider, you immediately begin to develop common law protections on that mark. These rights will give you exclusive control over your mark and enable you to stop infringement, though it only extends as far as the geographic scope of your use. For example, if you are using the mark only within a single state or two states, the common law protections are limited to those specific states.
- File for a state trademark
While it does not provide the same level of protection as federal trademark registration, states that have legalized marijuana usage will most likely approve trademarks at the state level, protecting your mark within each location in which it is registered.
However, according to Doyle, the major shortcoming of state registration is that you must be using the mark in that state to file for protection as states will not accept intent-to-use applications.
This is “not ideal” from a public policy standpoint, Doyle says, because it creates a “patchwork effect” of protection instead of the uniform ownership under a federal mark and could lead to confusion from state to state if products share names, but nothing else. For example, this would be particularly applicable among strains of medical marijuana that may have different usages, dosages, labeling or manufacturer, but share a name.
- Copyright your logo
While trademarks protect the “source indicator” of a product, copyrights protect creative expression, such as graphic art, fine art, poetry and even drawings and images used as the logo for a business. While a copyright will not protect a word or phrase, it will protect the image itself and provide a level of security for a business.
“It helps,” Doyle says, though it is not an end-all-be-all for a cannabis business.
For example, if you hire an outside artist to design the image, make sure you purchase the rights to that image instead of just usage; otherwise, the copyright will continue to belong to the artist. If an employee creates the art, however, the business owns its rights.
- Register “around the edges”
While cannabis itself remains illegal at the federal level, making it impossible to get copyright protection for a marijuana-specific business, Doyle recommends branding and seeking copyright protection on items that are not prohibited.
For example, register your trademark on legal items such as rolling papers, lighters and other cannabis-adjacent — but federally legal — products. In addition, if you are seeking to start a marijuana-infused edible company to make something like brownies, consider getting a trademark to manufacture the same product without the cannabis, thereby providing a “lawful use” of the mark that would be protected.
“This has worked,” Doyle says. “I’ve made it work.”
- Declare your intentions
Marijuana businesses can gain some level of protection by applying for a mark that describes the goods or services as something like “dried goods and flowers lawful under state and federal law” and then keep the application alive long enough to potentially see a resolution between state and federal laws that would make those goods legal.
Under this strategy, the goods listed are undeniably lawful and immune to refusal for 36 months to allow the applicant to begin using the mark for applied-for services.
Doyle admits this is a more “esoteric” way to gain some protection, but says it has also worked in the past, both in the cannabis industry and outside of it, including technology, where companies routinely file for trademark protections for products that are yet to be invented.
So, while the USPTO may never actually issue trademark registrations for marijuana products, an intent-to-use filing gives your application a priority date in case the agency’s policy changes. With a pending application submitted to the USPTO, someone conducting a search to register a similar mark may see your application and choose not to pursue theirs.
- Bring in a pro
While following these five tips may not result in full federal protection of your trademark, Doyle says they will provide some level of legal coverage for a company’s trademark.
And if that fails, there is always one final option.
Call a trademark and copyright attorney, Doyle says.
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