Strategies for Securing Brand Protections for Cannabis Companies

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Ryan D. Ewing

Of Counsel

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March 25, 2021
It has been two years since the federal “Farm Bill” removed hemp from the definition of marijuana, rendering cannabis plants and derivatives (such as CBD derived from hemp) that contain no more than 0.3% of THC on a dry-weight basis lawful as outside of the Controlled Substances Act (CSA).  
 
Despite the country’s growing acceptance of some form of cannabis legalization, securing federal protection for cannabis company trademarks continues to elude cannabis producers. While the U.S. Patent and Trademark Office (USPTO) opened the door for a narrow category of marks and products, based on a technical definition that comports with the Farm Bill, meaningful protection for cannabis trademarks requires a long-term filing strategy designed to “thread the needle” of available protection.  
 
Technically, federal registration has always been available for trademarks used with cannabis-related goods and services (e.g., smoker’s articles, educational materials, promotional clothing, home growing kits, and informational web sites and publications). The lynchpin of trademark rights is use in commerce, but the USPTO maintains a dual use and registration system. Therefore, owners must use both the “front door” (USPTO registration for secondary, but related products) and the “back door” (acquired distinctiveness through use of a mark in connection with primary products) to carve out territory for their cannabis brands as the legal framework continues to unfold.
 
If seeking to register a brand that may be in use or intended for use with cannabis but is also in use or intended for use in connection with non-cannabis products or services that may be complimentary to cannabis sale or use, keep in mind the following recommendations:
  • Do not include the word CANNABIS or other wording (CANNA, CBD, WEED) or imagery (plants) that suggest that the applied for mark is not in lawful use in commerce. Should an application include any indication that the purpose of the goods or services is or may be to engage in consumption or sale of cannabis it will result in a refusal to register.  
  • Even when a mark will be used in connection with the word CANNABIS or similar term as a descriptive or generic term on goods, an applicant chooses the mark it will register, and it should not include wording or images in its application drawing that will result in refusal.
  • Select a specimen that provides evidence of lawful use of the mark in commerce.
  • Craft the identification of goods (or services) narrowly to avoid a refusal on grounds that the goods or services are broad enough to be prohibited by the CSA.
  • Do not include ingestible products that may run afoul of the Federal Food, Drug, and Cosmetic Act, raising separate substantive grounds for refusal.  
For additional USPTO guidance on this subject, click here.
 
If you have questions about how these intellectual property issues may impact your business, or would like to learn more about our filing recommendations for cannabis industry owners seeking to protect their brands, please contact the authors of this alert.