Trademark protection is an important part of building brand recognition for any fledgling business. The problem is, however, that the U.S. Patent and Trademark Office requires “lawful use in commerce” for registered marks. Since cannabis commerce is not lawful under federal law, marijuana businesses seem to be stuck in a definitional dilemma.
But in practice, according to Doyle, there are several steps cannabis entrepreneurs can take to protect their marks. More may be possible than initially meets the eye.
The situation may be easier for ancillary businesses. “It is fine for grow-friendly products, like lighting or hydroponic systems seeking to capitalize on the marijuana economy to advertise in cannabis-themed publications and websites,” Doyle noted, “but it will facilitate registration of the mark to advertise as well in non-cannabis publications like the Pennysaver or Cooperative Extension publications. That will help illustrate to the trademark office that product is not predominantly geared toward something that is covered by the Controlled Substances Act.”
With respect to the more difficult problem of products closely linked to cannabis, Doyle offered five specific suggestions, using a hypothetical edible as an example.
Clear the Mark
As with any other business, it is necessary to make sure that no one else has superior rights in that mark for the same or similar goods. “Clearing is more than just looking to see if someone else has registered it,” he commented. “Nor should you take comfort in just looking at the USPTO website.” Doyle recommends engaging a lawyer who will conduct an exhaustive search, likely with the assistance of a search company, to ensure that the mark is not already in use.
In addition, he told MJINews, “Don’t count on being able to make some cute or parody use of someone else’s mark, like the now infamous tale of Reefer’s Pieces. When it comes to parody defenses, courts do not like sex and they don’t like drugs.”
Use the Mark
Trademark rights arise through use, so he suggested using the trademark even while an application for registration is pending. He cautioned, however, that the common law rights that arise through use are limited to the specific geographic area in which the product is used.
Apply to Register for Intent-to-Use on the Federal Level
Even for marks already in use, it is possible to file a federal intent-to-use application. In a situation involving a hypothetical cannabis edible, for example, “let’s suppose that while that intent-to-use application was pending, cannabis were removed from Schedule I and all of a sudden prescriptions for marijuana were not violative of the CSA. Then your situation with the trademark office would have improved.”
File for State Trademark Registration
Although state trademark registration protects a mark only within that state, Doyle recommends taking that step as well. State registration will provide some brand protection in the geographical area where the product is actually being sold.
File to Register the Same Mark for a Non-Cannabis Product
Finally, Doyle recommends registering the mark for a related non-cannabis product. If, for example, a business makes medicated brownies, he suggests registering a trademark for a related product, such as a cannabis-free brownie mix. That registration would likely be approved and might give the cannabis entrepreneur peripheral rights to enforce the mark even for the cannabis brownies.
Even though trademark law has not changed in the two years since recreational cannabis use became legal in Washington and Colorado, Doyle sees trademark applicants taking more assertive approaches to protecting their marks. It may simply be that cannabis entrepreneurs are now beginning to see federal legalization as a more realistic possibility.