GUEST COLUMN:

Sowing the seeds for brand success: Securing trademark protection in an evolving cannabis market

Mon, Apr 19, 2021 (2 a.m.)

With cannabis use becoming increasingly mainstream and with more and more players flooding the market, it’s more important than ever to have a plan in place to not only set your trademarks (i.e., your company brands) apart from competitors, but legally protect them. For now, federal law continues to be behind the curve and is struggling to keep up with this fast-moving market, resulting in major differences in what trademarks are protectable at the federal and state levels.

Lindsey Williams

Lindsey Williams

In the face of these state and federal differences, you may be asking yourself: How exactly do I go about sowing the seeds for my brand's future success? Here, we offer a simple framework for developing and protecting your trademarks in this evolving market.

It starts with understanding the legality of federally registering cannabis-related trademarks.

Because manufacturing, distributing, dispensing and/or possessing cannabis are all still considered illegal under the Controlled Substances Act (CSA), the United States Patent and Trademark Office’s (USPTO) policy is to refuse all trademark applications for “plant-touching” goods and services. A product or service is considered “plant-touching” if it includes: cannabis; cannabis-based preparations; cannabis extracts or derivatives; or paraphernalia or equipment designed for use in smoking, vaping, inhaling, ingesting or consuming cannabis (including synthetic cannabis).

While you cannot  protect goods and services at the federal level that are considered illegal under the CSA, it’s important to take steps now to start building your brand to ensure you can secure protection as soon as it becomes available. Below are three steps for setting yourself up for success as you wait for the federal cannabis laws to shift.

Secure federal trademarks for your brand in connection with goods and services that are federally legal.

Matt McKissick

Matt McKissick

A smart place to start when it comes to protecting your cannabis brand is to apply for federal trademark registration for those goods and services that are federally legal. If cannabis is legalized later on, you may be able to expand these registrations to include use in conjunction with cannabis products—which makes laying the groundwork now a prudent step for any business owner who wants to pounce on federal protection for the plant-touching aspects of their business (once that protection becomes available).

Some examples of currently protectable goods/services include: certain hemp products, which are Generally Recognized as Safe (GRAS) by the FDA; topical CBD products, so long as they comply with the 2018 Farm Bill; and clothing and other merchandise.

An important note: If the trademark(s) you’re attempting to register include a cannabis leaf in the logo—or the word “weed”—they indicate illegality under the CSA and may be rejected by the USPTO.

Secure state trademark protection for your cannabis goods and services.

Now that we’ve discussed the pitfalls and opportunities as they concern federal trademark protection, we do have some better news: Cannabis-related goods and services may be eligible for protection on the state level. While the protection afforded to a state trademark registrant is limited to the geographic state of registration, it still provides more extensive protection and legal remedies than purely relying on common law rights, making it a worthwhile investment in brand development. For example, a state registrant can prevent third parties from using the same or confusingly similar variation of the registered trademark within that state—meaning you can prevent fraudulent impersonators from hijacking your brand and benefiting from all the hard work and investment you’ve made in building your brand in the consumer marketplace.

Develop a brand-expansion strategy to prepare for federal legalization.

You don’t have to be a soothsayer to understand that cannabis is likely on the path to federal legalization. With California and New York both legalizing recreational cannabis, the federal government is likely to follow. And when that monumental moment comes around, how far your shoots and stems grow is all dependent on the roots you’ve proactively planted.

By following the steps we’ve outlined, ensuring you have the necessary resources in the company coffers and having knowledgeable trademark lawyers on hand to help you navigate this landscape will ensure that the seeds you planted early on will continue to produce for years to come. 

Lindsey Williams and Matt McKissick are attorneys with Brownstein Hyatt Farber Schreck in Las Vegas.

Back to top

Share