Are you a cannabusiness owner looking to protect your brand with a trademark registration? Well, as you’ve probably come to expect by now, such procedures and protections don’t come as easy in cannabis as they would in other industries.
Here’s the rub:
the United States Patent and Trademark Office (USPTO) will reject your trademark application if the goods or services described in the application violate the Controlled Substances Act (CSA) – that is, if the goods or services are primarily intended or designed for use in ingesting, inhaling, or otherwise introducing cannabis into the human body. That’s not breaking news, and the USPTO has been fairly consistent with this policy.
But did you know...
you can still file for federal trademark protection for certain ancillary goods and services connected to your brand, despite the federal prohibition?
Even if you were aware that at least some of your goods and services are eligible for federal trademark protection, navigating the application process successfully is a tricky proposition, as your applications will come under heightened scrutiny if USPTO examiners catch even a whiff of affiliation with everyone’s favorite plant.
Potential landmines include:
1. Multi-class applications: selectivity is required in choosing what goods and services you should apply for under one filing. Let’s say you file for ten different goods and services (each falling under a different classification) all at once. If any of these goods or services happens to be ineligible, or simply filed in a problematic class, the entire application will be flagged and protection can be unnecessarily delayed.
2. Beware “The Weed Patrol”: a small cohort of Examining Attorneys now handles the bulk of cannabis-related applications submitted to the USPTO, and it’s highly likely that one of them will be assigned to review your application. As such, you should expect a cannabis expert to be guarding your path to federal registration. In the early years of the industry, applicants could rely on a certain level of ignorance regarding terminology and the goods and services in question. Today, you won’t be pulling one over on the USPTO, and detailed knowledge of federal law and procedure is essential to placate The Patrol.
3. Your Online Footprint: your website, or any website for that matter, that contains information about your products and services is fair game for examiners. Examining Attorneys are not bound by the “four corners” of the application itself. Cleverly-worded product descriptions or euphemisms only go so far if your online profile resembles an Emerald Cup exhibitor’s booth. As noted above, you can expect examiners to be checking.
Because the federal trademark prosecution process is an uphill battle for cannabis companies, it’s best to consult a trademark attorney with detailed knowledge of the industry, and a proven track record of successful federal registrations for cannabis brands.
For more information on this and related topics, or to setup a free consultation, please contact the Law Offices of James P. Marion, Esq.
DISCLAIMER: This article is intended to provide general information only, and should not be construed as formal legal advice or the formation of an attorney-client relationship. You should not act or refrain from acting based on the materials contained herein and The Law Offices of James P. Marion, Esq. explicitly disclaims any liability for your action or inaction based on the contents of this article.
