There’s a common misconception in the cannabis industry that it is not possible to obtain federal trademark protection for brands. In fact, it is possible, and we are not referencing federal registration for hats and T-shirts which is pretty meaningless unless you are in the clothing business.
So how do we obtain federal trademark protection for cannabis brands in relation to products that actually matter to cannabis businesses?
First, we need to recognize that the federal trademark statute does not prohibit federal trademark registration for cannabis brands, per se. Rather, the statute prohibits federal trademark registration for cannabis brands in connection with cannabis products. What’s the difference?
To illustrate by example, let’s say that you have obtained a federal trademark registration for the hypothetical product name MondoVapePen in relation to non-cannabis vape pens and you have only ever done business in the state of California. Let’s say also that a competitor is using the brand MondoVapePen in relation to cannabis vape pens in New Jersey.
Of course, you would be hard-pressed to find a federal judge that would enforce a federal trademark registration to recover cannabis revenues on their use of MondoVapePen before prohibition ends. However, the day after prohibition ends — that is to say the day after cannabis is no longer scheduled as a prohibited substance — you could show up in federal court and sue your competitor in the hypothetical example above.
If a jury finds that your New Jersey competitor’s cannabis vape pens are within what is called the “zone of expansion” of non-cannabis vape pens, other things being sufficient, that jury can find for trademark infringement.
All of this holds true even if your competitor used the product name MondoVapePen in New Jersey before you did.
Let me explain: Under the federal trademark statute, a business can file a federal trademark application for a brand name even before it begins using that name in interstate commerce based on an “intent to use” — the date on which it files its federal application is the determinative date.
In summary, if you file a federal trademark application for MondoVapePen before your competitor and even before you have begun using the mark, when prohibition ends you could sue your competitor in federal court; other things being sufficient, you would win, assuming your trademark attorney has done everything correctly.
The federal application is a highly involved process. For example, it is vital that a trademark attorney be completely up-front about the fact that you sell cannabis products (or intend to) in association with this brand. Otherwise, arguably, you have committed fraud on the U.S. Patent and Trademark Office and another trademark attorney could submit to obtain a cancellation of your trademark registration should it ultimately issue.
This means that it is important for your trademark attorney to articulate the difference between the fact that you are requesting a federal trademark registration for non-cannabis products from the fact that your company also sells or intends to sell cannabis products in association with that same brand.
Tom Zuber is the managing partner of Zuber Lawler & Del Duca LLP, a firm of 40 attorneys with offices in California, Illinois and New York. He holds a law degree from Columbia Law School, a master’s degree in public policy from Harvard University and a biomedical engineering degree from Rutgers University, where he graduated with highest honors. He can be reached at tzuber@zuberlaw.com.
Each month in Leveraging the Law, the attorneys at Zuber Lawler & Del Duca will tackle a new topic that is relevant to the marijuana industry, providing valuable information to help cannabis business owners build and grow their business. Zuber Lawler & Del Duca helps cannabis clients with mergers and acquisitions, intellectual property, regulatory compliance and litigation. These articles are not legal advice. No attorney-client relationship exists with the reader.