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The registration of cannabis trademarks in the United States raises new questions. This is an unsurprising result of the troubled coexistence between the expansion of legality at the state level and the ongoing ban at the federal level. Cannabis companies need to keep these issues in mind when developing branding strategies. At the same time, however, you should not neglect the basics of trademark law.
Cannabis brands need to be distinctive
Under the Lanham Act (which governs state trademark registrations), a trademark may not be registered if it is “merely descriptive when used on or in connection with applicant’s goods”. This applies to all brands, not just cannabis brands. A guitar manufacturer cannot register the Guitar brand, just as a hemp breeder cannot register the hemp brand.
That is, writability is relative. Hence the qualification of the Lanham Act that a mark may not be registered if it is merely descriptive “when it is used on or in connection with” an applicant’s goods. The term “guitar” is in no way descriptive of a picture frame and so it is okay to register the Guitar brand in connection with picture frames. A guitar-shaped picture frame could be a different story as it describes a feature of the frame … but that goes into the weed.
Similarity to other brands
The Lanham Act also prohibits the registration of trademarks “that are anything like a” [registered] Trademark … deemed apt to cause confusion or errors or to mislead when used on or in connection with the applicant’s goods. ”Perhaps the most important reason for trademark protection is first and foremost to reassure consumers that a particular good or service belongs to a particular owner. This applies to all brands, whether cannabis brands or fast food brands.
When you walk into a McDonald’s, you want to know you’re walking into a eatery affiliated with the McDonald’s Corporation, rather than a random burger joint. Given these concerns, it is obviously impossible for anyone but McDonald’s Corporation to register the McDonald’s trademark or trademarks very similar to it. Where the exact line is drawn, well, that’s back in the weeds!
Note that the Lanham Act reiterates that there is confusion, error, or misrepresentation caused by a mark “when used on or in connection with” an applicant’s goods. While a Macdonald restaurant might confuse consumers, Macdonald tobacco causes far less confusion and so the USPTO had no problem registering this trademark for tobacco products (US Reg. No. 5910691).
With cannabis companies selling all sorts of cool brands, both for core products and merchandise, they need to be aware of potential conflicts between their cannabis brands and trademarks that are already registered.
Use in trade
US law requires a trademark to be used in commerce before it can be registered. Brand owners can apply register their trademark before it is used in commerce (on an intent-to-use (ITU) basis), but registration will not be completed until use has been determined to the satisfaction of the USPTO, within three years of after In addition, many states do not allow ITU filings, and these requirements apply to all brands, whether or not cannabis brands.
Companies should take retail requirements into account when designing their branding strategy. One variable is the timing of trademark applications: there is no point in filing a trademark application if it is clear that the requirement of commercial use will not be met under any circumstances during the relevant period. However, product launch dates are also a variable. It is also important to keep in mind that some jurisdictions do not have trading requirements. While it may make sense to withhold a US application, a parallel application can be made in the EU.
Don’t forget the basics!
The bottom line is this: while cannabis brands have a unique complexity, in many ways they are like any other brand. Cannabis companies should be aware of the specific issues without neglecting the basics of trademark law.