Cannabis Trademarks: Start Establishing Them Today

Every industry, including cannabis, deals with trademarks on a daily basis. Trademarks are synonymous with your brand and the products or services you provide. Establishing and maintaining trademark rights are key to helping your business grow. This article, written by a cannabis trademark lawyer, covers the various types of trademarks, the steps needed to secure them, and more.

Do you need help securing trademarks? Would you like to speak with a cannabis trademark lawyer? Request a consultation now.

Brand materials are the first thing consumers use to locate and identify your business.

If done right, just seeing your brand triggers good feelings in your target market.

However, if someone else attempts to steal your brand materials, or use a similar brand that causes consumer confusion, trademark protections are the tools used to legally protect yourself and stop the other party.

After all, you’ve invested enormous amounts of time and energy into creating your brand, the last thing you want or need is someone else stealing your work because you didn’t secure airtight trademark protection.

Common Law Trademarks

In most industries establishing basic trademark protection is a straightforward process:

1. Identify the product or service you’re providing
2. Identify the “mark” you wish to associate with that product or service
3. Actually, use that mark as you provide the product or service to consumers

Doing just this much creates what is known as a “common law” trademark.

While establishing a common law trademark is easy, the rights created are very limited and difficult to rely upon when in a dispute with another party.

Common law trademarks only protect brands associated with the lawful use of goods or services and are limited to the actual geographic area of use.

Further, you can only use these rights if the trademark owner can demonstrate actual use and first use of the mark.

Because of these limitations, these rights are typically only useful when defending your right to use your brand in a dispute with a local competitor.

Do you need help securing trademarks? Would you like to speak with a cannabis trademark lawyer? Request a consultation now.

State Trademarks

Qualifying trademarks can obtain a significantly more useful level of protection through registration with the State of Michigan.

A trademark registered with the State of Michigan provides protection for your mark within the borders of the state.

The biggest benefit provided is that your trademark will be listed in Michigan’s trademark database: a public record that can be cited to prove first use.

Registration places everyone else in Michigan on notice that you’re the owner of, and have claimed protection for, your mark.

This can be a major deterrent against others using your mark and creates additional legal protections for disputes within the state of Michigan.

State trademarks are valuable tools for cannabis businesses.

However, such protection doesn’t extend to trademark claims outside the state.

Further, in order to qualify, the products or services provided under your mark must be in use at the time you submit an application.

Federal Trademarks

Traditionally, the highest level of trademark protection is a federally registered trademark: registration with the United States Patent and Trademark Office (“USPTO”).

If a trademark owner provides a good or service in interstate commerce, registration allows that owner to specify the goods and services provided, and protect the right to use that mark throughout the United States and its territories.

The benefits of a Federally Registered Trademark include, but are not limited to:

1. Legal presumption that you’re the owner of the mark (in any state);
2. Legal presumption that you have the right to use the mark (in any state);
3. Public notice that you’re the owner of the mark;
4. Your mark is listed in the USPTO database, to prevent future infringement;
5. Registration can be recorded with U.S. Customs and Border Protection to block counterfeiting from entering the country;
6. The right to bring legal action concerning your mark in federal court;
7. The opportunity to seek registration of foreign trademark filings; and
8. The ability to use the federal registration symbol: ®

Unfortunately for the cannabis industry, this form of trademark registration is a federal protection.

The USPTO will not register marks that describe goods or services that violate the Controlled Substances Act.

This includes any product or service that involves manufacturing, distributing, dispensing, or possessing marihuana or marihuana-based preparations.

Further, the USPTO will not register any mark that involves “drug paraphernalia” or any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing marihuana into the human body.

Not only are actual marijuana products prohibited, any ancillary tools, equipment, or services directly involving marihuana will not qualify for registration.

Effectively, most of the products or services provided by marijuana businesses don’t qualify for federal protection.

However, there are several trademark strategies available to the cannabis industry that can create significant protections despite these limitations.

Do you need help securing trademarks? Would you like to speak with a cannabis trademark lawyer? Request a consultation now.

Indirect Protection

Federal trademark protection for a cannabis business will always be an indirect protection.

Until cannabis laws change at the federal level, you’ll not be able to use federal law to enforce trademark rights that involve a controlled substance.

Instead, you must think of your brand as more than just cannabis.

Look at how other companies advertise their products.

Coca-Cola®, for example, is most known for soft drinks.

However, the Coca-Cola Company also sells apparel, stickers, poster, coolers, Christmas ornaments, backpacks, china, board games, bottle openers, and a whole host of other products and services.

Some of these products, such as coolers and bottle openers, have a clear association with Coca-Cola’s main product.

The closer that association is, the more powerful Coca-Cola’s trademark influence will be over potential competitors.

For example, if another company tried to sell “Coke” branded koozies (in trademark terms, insulating sleeve holders for cans or bottles), the Coca-Cola Company would have a strong claim against this company for infringement.

Coca-Cola customers are very likely to think there is some sort of association between a Coke-branded product and the Coca-Cola Company.

Although the primary product associated with the Coca-Cola brand is a soft drink, a “koozie product” is related in the mind of a consumer.

Koozies are soft drink accessories.

So even though Coca-Cola hasn’t established federal trademark protection directly for this product, it can still use its trademark rights to prevent this use.

When confusion created by brand use is likely to result in customers purchasing products from Coca-Cola’s competitors, the Coca-Cola Company has an enforceable trademark claim.

The Coca-Cola Company doesn’t need to establish protection for every possible product or service it may be involved with.

This allows Coca-Cola to enforce trademark rights, even when no actual soda pop is involved in a dispute.

Coca-Cola can make these claims because trademark protection relies on establishing consumer confusion.

Trademark law, at every level, is designed to prevent consumer confusion.

If a competitor confuses a customer into believing that they’re obtaining services or purchasing products from a trusted, known source, and if in reality, this isn’t the case, a trademark owner has the right to enforce its trademark protections and prevent such conduct.

Marijuana businesses need to approach trademarks the same way.

What types of legal products or services can your company provide that are federally legal, but still associated with your cannabis related activities?

T-shirts and hats, for example, are often used to celebrate a company, or in some cases, a specific product.

The same can be said of stickers and posters.

What about smoker’s articles like lighters, ashtrays, or rolling paper?

Maybe your company would like to provide an educational website on the topic of recreational marijuana, or a blog providing updates on marijuana related news?

Remember, trademarks always entail three equally important elements: the product/service provided, the mark, and use.

Establishing a trademark and associating it with a use that is federally legal is a perfect means of developing a protectable trademark right.

If you’re interested in pursuing trademark protection for your various cannabis brands, think about what other types of products or services you would be interested in also selling that can establish federal protection.

We call this approach “circling the wagons.”

Establish federal trademark protection for the products and services your cannabis company can legally (federally) provide.

The Secret to a Strong Trademark

Here’s the secret to developing a strong cannabis trademark: Combine the protections available through your state’s registration process with the additional protections you can develop by associating non-cannabis, but related products and services to the mark.

Protect these products and services with federal trademark registrations.

While these protections aren’t as strong as a federal trademark directly associated with your product or service, remember, none of your competitors can use direct federal trademark protection either.

Despite federal law’s limitations, significant trademark protection is available to marijuana businesses.

Understanding your brand and developing strategies to protect yourself are key to establishing strong cannabis trademarks.

Do you need help securing trademarks? Would you like to speak with a cannabis trademark lawyer? Request a consultation now.