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Regardless of the type of business you own, protecting your brand should be your first priority. However, you may be wondering whether a trademark can safeguard the logo, slogan, or design on a product when it is legal within your state, but not at the federal level, such as a marijuana plant or cannabis-derived products. As recreational and medicinal marijuana use has been legalized in many states over the last few years, cannabis companies have been emerging throughout the country and spend a considerable amount of time and resources developing their brands.
Critically, marijuana businesses can face unique challenges when it comes to protecting their goods and services. But after you’ve worked for months or years to get your cannabis company off the ground, it’s essential to do everything you can to safeguard it from competitors who seek to make a profit from your labor. Depending on the products you sell, you may not be able to register the mark that represents your brand with the United States Patent and Trademark Office (USPTO). There are still a few ways you can shield your brand.
To register a trademark with the USPTO, the mark must have been used on goods or services that can be lawfully sold across state lines. When considering a trademark application for a marijuana plant brand or cannabis company, the USPTO’s examining attorney will first determine whether the goods or services are legal under federal law.
Because the sale of marijuana plant products and the plants themselves, along with equipment designed to introduce it into the body, are prohibited under the federal Controlled Substances Act (CSA), the USPTO will typically deny a trademark application in connection with these types of goods. However, if the application is for a product or service that complies with the CSA and the Food, Drug, and Cosmetic Act (FDCA), it’s more likely that it will be eligible for federal trademark protection. For instance, the marks associated with topical CBD products — and hemp products Generally Recognized as Safe by the FDA — can usually be safeguarded with a trademark.
Even if you own a cannabis business, you may still market products that qualify to be protected with a federal trademark. If a product does not contain a legally prohibited substance, it may be eligible for trademark protection, even if your company manufactures other goods made with cannabis. For example, while a trademark application for a line of edible products containing banned substances would be denied, non-THC products distributed by your company could be trademarked.
A mark may also be more easily registered with the USPTO if your business doesn’t “touch the plant.” You may also be able to obtain federal trademark protection in connection with an apparel design or ancillary services that are not related to selling marijuana. A design, logo, slogan, or catch-phrase used in a mobile app to locate dispensaries may also be federally registered, as long as the app does not serve as the platform to sell the products.
Federal trademark law preempts state trademark law since it offers greater protection, which is why it is the preferred strategy to protect a brand. But while it may not be possible to obtain federal trademark protection for your marijuana brand, every state has specific laws concerning trademarks and maintains its own registries. Registering your trademark within your jurisdiction can be an effective way to shield your brand from competitors in the local market.
It’s essential to understand that even though you acquire common law rights to your trademark by using it in local commerce, registering it with your state’s database can offer increased protection. Significantly, common law rights acquired through usage are geographically limited. To ensure you will be able to legally enforce your rights in the event that a wrongdoer infringes upon your brand, registering it with the state can offer increased protection if federal registration is not available for your goods or services.
Whether you own a cannabis company or any other type of business, it’s crucial to protect your brand. As cannabis is legalized in more jurisdictions, companies are facing more competition and an increased risk of potential infringement by third parties. A knowledgeable and skilled trademark attorney can help you develop a thorough strategy to guard your mark and shield the brand you worked hard to create.
Located in Ann Arbor, Michigan, the Trademark Lawyer Law Firm offers experienced counsel and solid advice to business owners, entrepreneurs, and startups in a wide variety of industries. With more than 6,000 trademarks under our belt, we know what it takes to register a mark with the USPTO the first time you file. Contact us today to schedule a free 15-minute consultation.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.
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