Don’t Let Your Cannabis Brand IP Go Up in Smoke

Much of the discussion around cannabis laws in the United States has focused on the odd legal regime we are living under: numerous states, especially in the west, allow medicinal and recreational cannabis to be sold openly (and advertised widely on billboards, among other places), while the federal government continues to treat nearly all cannabis possession as a federal crime. While an uneasy and fragile détente has come into place between Trump’s anti-marijuana DOJ and cannabis businesses in states where marijuana is legal, there is another thorny state v. federal issue that cannabis businesses must contend with: protecting their intellectual property through the use of the federal trademark system.

Why Protecting Your Cannabis-themed Product With a Trademark is Important

To be clear, having your business’ product names, logos, slogans, or other identifying marks protected is often crucial to ensuring that another business does not swoop in and sell products with confusingly similar marks. It’s certainly not helpful to you, your investors, or the continued robustness of the cannabis market if you spend a year creating a cannabis-infused lollipop called “Marilu’s Stinkweed Sucker” (not a real product, but yours for the taking), carefully designing its packaging and branding only to have some unoriginal competitor simply steal the packaging and name of your wildly popular lollipop and make the profits that should be yours (you presumably being Marilu in this scenario).

This is exactly the type of situation that federal trademark law has long served to prevent from happening. By protecting your branding, you avoid copycats from taking your profits by stealing your intellectual property, and we all enjoy the benefits of a marketplace where innovators and entrepreneurs are encouraged to create the best cannabis-themed lollipop on the market by awarding them their due profits.

The Current State of the Law for Trademark Registration for Cannabis Products

Again, it is not currently possible to obtain a federal trademark for products containing cannabis (except for certain types of federally legal CBD), as the United States Patent and Trademark Office (USPTO) will not grant a trademark for any product that violates federal law, as is the case with any products containing THC. Because the federal government last year determined that certain types of CBD are indeed legal to be sold anywhere, products containing only those legal CBD products may be eligible for federal trademark protection, but determining what type of CBD is legal and not under federal law is based on what part of the marijuana plant the CBD is derived from (currently, only CBD from mature stalks and seeds is considered legal, thus only products deriving CBD exclusively from those portions of the plant are eligible for federal trademark protection).

Note, however, that the USPTO can grant trademarks related to cannabis so long as they are not for an illegal product themselves. For example, you could potentially get a trademark for clothing or other non-cannabis products with your company’s cannabis-themed branding on it.

While federal trademark registration is the best way to protect your trademark, states also provide more limited trademark registration for products. Several states have stepped into the breach created by the federal government’s refusal to provide trademark protection for cannabis products, although that protection is generally limited to enforcement within the state itself and may create additional requirements for trademark holders to actually enforce their trademark. For example, California (which legalized medical marijuana in 1996 and recreational marijuana in 2016) has created a state trademark registration program as of January 1, 2018 for products that are lawfully being sold within the state. This means that you (you still being Marilu) need to ensure you have all of the proper licensure to sell your stickweed suckers before applying for a trademark.

Furthermore, unlike federal trademark law, California requires that trademark applicants be currently using their trademark before obtaining the trademark protection, meaning you, Marilu, will also need to actually have your trademarks out in the marketplace before being able to obtain the trademark. That said, you will need to act quickly before another company uses your trademarks as well and obtains trademark protection first.

Confusing? Absolutely. But an experienced IP attorney familiar with the constantly evolving rules surrounding cannabis products can help you take the steps needed to protect your intellectual property. If you have questions about intellectual property (cannabis-related or other), reach out to us!