Brand protection is crucial for every type of company. You might be wondering whether you can file for trademark protection if the goods connected with your brand are legal in your state — but not at the federal level. As more states legalize recreational marijuana, this is the challenge that is often faced by cannabis businesses. However, businesses may still have options available to them to safeguard their cannabis brands in an increasingly competitive market.
Trademark registration is only permitted for goods and services that can be lawfully sold in interstate commerce. Since cannabis has not been legalized federally, federal trademark registration is generally not allowed for marijuana and cannabis products. A United States Patent and Trademark Office (USPTO) examining attorney will typically deny a trademark application outright if it is connected with goods or services that are illegal under federal law. However, there are some exceptions to note when it comes to cannabis-related products.
A trademark for any ingestible cannabis product — including food and dietary supplements — is likely to be denied federal trademark protection. But depending on the cannabis-related goods you sell, you may still be eligible to register your mark. If the application is for a product or service that complies with the Controlled Substances Act or the Food, Drug, and Cosmetic Act, the mark is more likely to be accepted. Such products may include the following:
As a result of the passage of the Farm Bill as part of the Agricultural Improvement Act of 2018, the USPTO has been less strict concerning the classification of hemp-derived goods. If the CBD in your product is derived from hemp and contains less than .3% of THC, you can file for trademark registration as long as the product is not meant to be ingested.
A recent decision handed down by the United States Court of Appeals for the Ninth Circuit suggests the possibility of increased legal trademark protections in the future. In AK Futures LLC v. Boyd Street Distro, LLC, the Ninth Circuit held that delta-8 tetrahydrocannabinol (THC) falls under the definition of “hemp” pursuant to the 2018 Farm Bill, making it lawful at the federal level.
Specifically, the case involved allegations concerning trademark and copyright infringement in connection with e-cigarette and vaping products that contained delta 8-THC. AK Futures, an e-cigarette and vaping product manufacturer producing products under the brand “CAKE,” sought an injunction against Boyd Street for selling counterfeit versions using the same “CAKE” trademark. While the District Court granted the injunction, Boyd Street appealed the decision, arguing that the CAKE mark was not protected by trademark law since delta-8 THC is not legal under federal law.
On appeal, the Ninth Circuit found that because the delta-8 THC products were not prohibited by federal law, the trademark can be registered with the USPTO. Notably, it also found that delta-9 THC products still cannot be afforded federal trademark protection, regardless of whether they are legal on the state level.
Federally registering a Trademark can be a complex matter for a cannabis brand, since there are many nuances involved. Owners of cannabis businesses should consider all viable options when it comes to protecting their brands. Critically, even if your company manufactures goods that contain cannabis, a product that is produced without a federally prohibited substance may still be eligible for protection.
Your company might also be able to register a mark for a product that does not come into contact with the actual plant. For instance, certain apparel designs or services that are not related to the sale of cannabis may be registered. Logos or slogans associated with informational websites, dispensary directories, or non-banned complementary products may also be registered with the USPTO.
Companies selling cannabis products might also be able to register their marks within the state they are doing business. Significantly, even when federal registration is not permitted, state trademark registration may be available to businesses that are selling and manufacturing products in a jurisdiction where cannabis is legal. This can be an effective method to safeguard a mark from local competitors. Although common law rights are acquired by using the mark in commerce, registering it with the state database can help to increase its protections.
Federally registering a Trademark cannabis brand can be complicated and it’s crucial to have a knowledgeable trademark attorney by your side who can protect your brand. At the Trademark Lawyer Law Firm, PLLC, our attorneys work with entrepreneurs in the cannabis industry to develop comprehensive brand protection strategies. Located in Ann Arbor, Michigan, we assist a variety of businesses across the country with a broad scope of trademark matters. 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.