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Trademark Registration of Marijuana Products

By Eric Misterovich

Trademark Registration of Marijuana, Cannabidoil, and Hemp Products

A trademark is any word, slogan, logo, symbol, or design that identifies an organization’s goods or services as unique from another set of goods or services. Trademarks serve two important functions. First, they are a source identifier, allowing one company to distinguish its goods or services from its competitors’, and preventing infringers from benefiting from the public perception earned through the sweat, blood, and tears of the trademark owner. Second, they are an indicator of quality, allowing consumers to know where they bought their products.

Because branding comes into play in every industry, we are seeing interesting developments from a variety of different sectors. For example, in 2017, we saw heavy metal bands challenging long-standing rules on disparagement, and our own Detroit Red Wings look at a potential infringement case against a hate group.

One area in which we will see opportunities for growth in the coming months is in marijuana-related products due to potential changes in definitions at the federal level.

Definitions Under the Controlled Substances Act (CSA)

Although marijuana and related products are legally available to various degrees in 47 states, including Michigan, under the CSA, marijuana is still a Schedule 1 controlled substance, meaning that it has a high potential for abuse with no currently accepted medical value.

Previously, the CSA defined marijuana to include the entire Cannabis Sativa L. plant, not making any distinction between its different parts. However, on January 4, the 2018 Farm Bill was signed into law, which brings about major changes to how the federal government regulates cannabis. 

This bill has created a new, separate definition for “hemp,” defining it as any plant with a tetrahydrocannabinol (THC) level below 0.3%. Hemp produces cannabidiol (CBD) oil, which is promoted as a wellness drug that does not get users high. Instead, it may be useful for treatment of epilepsy, anxiety, as well as for other medical problems.

Due to this new definition, certain strains of cannabis are now legal at the federal level – a major change to the previous drug enforcement regime.

Trademarks for Cannabis, Marijuana, and Related Products

There are a number of provisions under the current statutes and regulations that apply to the trademark registration of marijuana related products.

First, 15 USC 1051 and 15 USC 1127 allow owners of trademarks used in lawful commerce to seek trademark protection. Again, trademarks allow companies to avoid unfair competition, so it makes sense that Congress would not allow companies conducting illegal transactions on the black market to seek legal trademark protection.

Second, if an applicant is requesting a trademark on a service or product that is regulated under another law, 37 CFR 2.69 allows the Trademark Office to determine if the applicant is complying with the applicable standard because use of a mark in commerce must be lawful.

In a 2017 Trademark Trial and Appeal Board case, the Trademark Office refused to issue trademarks that would protect branding on “dispensaries selling marijuana” and “dispensary services.” These actions are illegal, under the CSA’s prohibition on manufacturing distributing, and dispensing controlled substances, including marijuana. As a result, the Board could not register the mark due to the then-definitions in the CSA.

This decision did foresee the reclassification of certain strains of cannabis. Due to the new definition in the 2018 Farm Bill, excluding hemp and CBD from Schedule 1 drugs, we will almost certainly see new trademark applications for these products in the coming months.

Tips for Protecting Your Cannabis-Related Trademarks

Register Early

Now that hemp and Cannabidoil have been removed from the list of controlled substances, if your business is part of the cannabis industry, you should consider filing for trademark protection in order to protect your brand sooner rather than later. Due to the long timeline for trademark registration, it often makes sense to begin the process early.

Canada legalized recreational marijuana in 2018, but already their Intellectual Property Office is facing a bottleneck of cannabis-related brand names. Companies who delayed attempts at registration may be looking at a wait time of over a year before their brand is protected.

A similar “green rush” to register trademarks in the US is expected, so don’t delay getting your application in to avoid potential bottlenecks.

Work With a Lawyer to Get Your Application Right the First Time

At the moment, not all cannabis is legal in the U.S. – only certain strands. This is a new development in a new industry. The attorneys at the Trademark Office may not be aware of the different definitions in what is legal under federal law and what is not. This will not result in an automatic rejection, but it could delay your application.

An experienced trademark attorney will be able to craft your application in a way that clearly demonstrates that the goods or services your company provides are legal under current federal definitions. A clear, technical explanation at the outset can go a long way to smoothing the path to approval and could save months in further office review.

It is also useful to note that the trademark office has approved more than 300 marks specifically related to marijuana that do not involve actions currently prohibited by the CSA. For example, “Professional Marijuana Grower” owns a word mark on the title of their magazine that specifically protects their printed publication. There is a lot of room for business development in the cannabis region that does not involve manufacturing or dispensing the product.

Contact Your Elected Officials

While this last step does not specifically relate to brand protection, it is a smart move for any business in this new industry. If you are involved at all in the marijuana industry, you should contact your Senators and House Representatives to urge their support of changes to the law toward full legalization.

Marijuana is a huge industry, projected to generate $75 billion in sales, if it is fully legal by 2030. This alone should make your elected officials take note of the importance of having their constituents enjoy the full benefits of the law.

This article is for informational purposes only and does not contain legal advice. If you are interested in seeking trademark protection for your marijuana-related product or have other intellectual property questions, our experienced IP attorneys today with the form on this page, or call us at 855-473-8474.

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