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Cannabis brands must be aware of cannabis-specific trademark issues. However, they should also be attentive to trademarking basics. In January, we talked about three main trademark issues: distinctiveness (or likelihood of confusion), and application bases. Today, we will continue our exploration of trademark basics and examine the importance of carefully choosing goods or services to satisfy commerce requirements.
How to show usage in commerce
We have explained previously that trademarks are not registered by the USPTO unless the trademark is actually used in commerce. To demonstrate use in commerce, the trademark applicant must produce a specimen, defined by the USPTO as “a sample of your trademark as used in commerce.” This is true of all trademarks, regardless of whether they are cannabis trademarks, software trademarks or wicker basket trademarks.
The most common specimen form for goods is a photograph of a product bearing the trademark. Websites are very popular for services.
From the beginning, keep in mind requirements for commerce use
The USPTO does not allow trademark registrations for goods or services that are unlawful at the federal level, as many of our readers know. This applies to marijuana, which is a controlled compound, but also CBD products, which are subject to the Federal Food, Drug, and Cosmetic Act.
If cannabis companies want to secure trademark protection, they can seek registration of their trademarks to legalize goods and services. Sometimes, trademarking is compatible with the overall business strategy. A lot of brands consider merch to be a major revenue stream. Therefore, it is logical to register the trademark for apparel, sunglasses and lighters.
Brands have many options when it comes to legal goods and services. Brands should remember that each type of service or product will eventually need to be used in commerce. In order to be able to show commerce use, brands must also consider the practicalities of offering and producing goods and services.
“Safety schools” for showing use in commerce
In an ideal world, the need to show use in commerce would not drive any brand’s business activities; instead, specimens should be the natural byproduct of regular operations. However, many brands find themselves in a position where they are no longer considered specimen-worthy after receiving a USPTO Notification of Allowance (NOA). This is a particular risk when there is a disconnect between a brand’s core business and their trademark applications–an inevitably when that core business is federally unlawful.
Brands have three years from the time they receive a NOA to submit their specimens. But their trademarks remain unregistered during this period. For busy brands, it can take up to three years.
Brands should consider how they will market the services and goods described in their trademark applications. Brands should also ensure that applications cover at least some goods and services that they can, with a high degree of certainty, roll out over the next 3-4 years–keeping in mind that it might require a detour of sorts from their core business.
These products and services are safety schools for the brand. They may not be what motivated the creation of the brand. They may not account for a significant part of the brand’s revenues. But they can still play a key role in the protection of the brand’s intellectual property.