Published via JD Supra
In an industry that runs on innovation and differentiation, a cannabis brand’s identity is among its most valuable—and most prone to copying—assets. It’s a common myth that cannabis industry brands cannot get trademark protection. In fact, many cannabis-related trademarks are registered with the U.S. Patent and Trademark Office (USPTO), including U.S. Weed Channel, MedMen, Cheech’s Private Stash, and GOT GUMMIES? to name a few.
Why do cannabis businesses need trademarks?
- Brand protection in a competitive industry
- Name disputes are easier (and less costly!) to resolve
- Creates goodwill and improves customer loyalty
- Establishes a tangible asset that can be licensed, transferred, and assigned a monetary value
- Gives you the right to sue infringers in Federal District Court and seek greater damages
Note: your trade name (d.b.a.) is not a trademark!
What types of trademarks are available for cannabis businesses?
Following the enactment of the 2018 Farm Bill, trademark registration for hemp and hemp-derived CBD products and services are federally available with the USPTO. Products regulated by the FDA—such as food, beverages, and dietary supplements—may face additional hurdles obtaining USPTO approval.
Federal USPTO registration may be available for non-plant-touching businesses, as well as for products or services that don’t involve the CSA (including products such as apparel, lighters, ashtrays, rolling papers, vaporizers, and websites).
Generally, there is a path available for achieving some USPTO registration for brands in the cannabis, hemp, or CBD industries, and registration for ancillary products or services is better than no registration at all. For example, several dozen VS clients have received approval of their marks from the USPTO.
State trademark registrations and common law trademark rights may be available for cannabis brands in states that have legalized cannabis.
What can a trademark protect?
Note: Before you get too far into branding your company, products or services, it’s a good idea to reach out to a trademark attorney. You don’t want to spend too much time or money on ideas or designs you can’t mark.
What makes a unique trademark, and which types are strongest?
Simply put—the more generic your trademark, the easier it is for others to challenge. In the cannabis industry, you should avoid using terms such as “green,” “kush,” “canna,” “420,” “THC,” “Mary Jane,” and “weed” because they are extremely common. Don’t believe us? Just do a web search!
The more distinctive your trademark, the better. Distinctive marks are considered strong as they are the hardest to challenge.
Fanciful trademarks are typically the most distinctive and hardest to challenge as they are invented solely to function as a trademark. Examples of fanciful marks include Leafly and THCHEESE.
Arbitrary trademarks are also distinctive. These strong marks are composed of a common word that is unrelated to the good or service for which the trademark is used. Examples include Level Blends and ROAM.
Suggestive marks describe some aspect of the product or service. This type of mark is helpful for marketing and advertising as it usually hints at the product or service. For example, Seven Point, Re-Leaf, and Royal Highness.
Descriptive and Generic are the weakest types of trademarks. These types are not as distinct, and therefore easier to challenge (but widely used in the cannabis industry).
Descriptive marks are usually adjectives that describe a product or service. This includes location-based words, surnames, and alternative spellings. Examples of this type include THC Design, Humboldt Green, and Los Angeles Chronic.
Generic terms typically describe a category or type of product or service and can never receive trademark protection. Examples of this type include Denver Dispensary and Smoke Shop.
For more on trademarks, including common pitfalls, strategies to differentiate your mark, and how to avoid infringing on registered marks, watch this discussion with VS intellectual property attorneys Sahar Ayinehsazian, Erik Pelton and Jeffrey Welsh