Written By: Brandon Dorsky
A trademark is a symbol, word, or words legally registered or established by use as representing a company or product. Trademarks are meant to serve as source identifiers that signal to a consumer the origin(s) of a product or service. Both the federal government and state governments allow for the registration of trademarks as a property right for goods or services used in commerce.
Trademark law requires that, for a trademark to be registered, the use(s) in commerce must be lawful. Precisely because the registration of a trademark requires that the use of the trademark be on lawful goods or services, registering a trademark for a business name or logo for a cannabusiness could potentially be an exercise in frustration.
Cannabis Trademark and Federal Trademark Protection
Unfortunately, names and logos used to identify goods or services relating to the sale or consumption of cannabis are historically not entitled to federal trademark protection and treated as non-registrable because federal law prohibits the possession and/or sale of cannabis. Although cannabis goods and services are currently recreationally legal in more than ten states, and medically available in over 30, the United States Patent and Trademark Office continues to treat the names and logos of businesses producing cannabis goods or services as non-registrable marks. Federal laws prohibit registration of marks for goods that are not lawful in commerce; however, federal law permits an applicant to apply for marks on an intent to use basis for goods or services that are not yet in use in commerce. Any individual or company can attempt to register a mark that they intend to use on goods or services. Some cannabis companies employ the strategy of applying for federal trademarks on an intent to use basis as a quasi-placeholder or insurance policy for protecting brand identity.
Despite limitations at the federal level to obtaining federal trademarks for goods or services involving or related to cannabis, cannabis brands are not without options as there are viable strategies for protecting and policing a cannabis brand. Some companies have successfully registered federal trademark rights for goods and/or services adjacent, but relating to cannabis activity, including, for example, Cookies SF, LLC’s registration of COOKIES for storage containers, and Grenco Science’s registration of G Pen for vaporizers. Additionally, certain states’ laws allow for the registration of state law trademark rights for cannabis goods or services, including both Colorado and California. Even though some states allow for the registration of marks for use on cannabis goods, and a brand could enhance their intellectual property portfolio through such registrations, the registrant thereafter would potentially be precluded from obtaining a federal registration for that same mark because of the pre-existing state law filing for goods that are deemed not lawful in United States commerce. And that is what Webster’s likes to call a paradox for a to-be or existing cannabis brand.
Cannabis Companies Can Claim Common Law Trademark Rights
Independent of registered trademark rights, companies practicing in cannabis can also claim common law trademark rights for their brand identity. There are also other intellectual property rights that may be registerable that could aid in protecting a cannabis company’s brand identity, including copyrights.
Trademark Filing Fees and Legal Expenses
Filing fees and legal expenses for the preparation and filing of applications for the registration of intellectual property rights, including trademarks or copyrights, are relatively low compared to other cannabis industry legal expenses. Filing fees for trademarks at the United States Patent and Trademark Office range from $225 to $600 per trademark per class, and state law filing fees are in a similar range, although the fees vary from state to state. Filing fees for copyrights are even less, and often as low as $70 per filing.
Hoban Law Group’s attorneys include some of the cannabis industry’s leaders in intellectual property management and protection. Should you have any intellectual property concerns, including a need for advisement on how to protect your cannabis brand’s identity best or register related trademark(s) and/or copyright(s), Hoban Law Group is available to help and can be reached at firstname.lastname@example.org.