Big news for California cannabusinesses – come January 1, 2018, the world’s largest cannabis market will finally allow registrations for certain cannabis-related trademarks and service marks through the Secretary of State’s office.
Trademark applicants must comply with two conditions:
- The mark must already be in lawful use in commerce within California (that is to say licensed use); and
- The application must fit within the corresponding classification of goods and services adopted by the United States Patent and Trademark Office (USPTO).
Previously, the Secretary of State’s office adhered strictly to the USPTO’s interpretation of the Controlled Substances Act, which prohibits trademark or service mark registrations for non-ancillary cannabis goods and services. As such, many Golden State cannabusinesses have so far been deprived of valuable intellectual property protections on both a federal level and in their own backyard.
Now that’s changing...to some extent.
The details surrounding the state’s newfound permissiveness are conspicuously lacking, and our recent conversation with a trademark examiner at the Secretary of State’s office revealed that it is still unlikely that many cannabis-containing goods will be allowed registration, presumably due to cannabis being incongruous with the federal classification system (frankly, we find that to be a gross misinterpretation of how federal classification functions). The examiner did suggest that most cannabis-related services would be able to register.
This makes Secretary of State’s open invitation to register cannabis trademarks potentially misleading, and it remains to be seen exactly what applicants would pass muster in light of the current (vague) policy.
Something is typically better than nothing, but given the nuance still required to prosecute a state registration, we highly recommend that you consult an attorney before jumping into the bureaucratic weeds.
We also urge you to investigate your options post haste, as a priority state filing could earn you a leg up on any confusingly-similar 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.
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