Strategies for Securing Brand Protections for Cannabis Companies

Published: 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:

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.

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