Cannabis Trademarks: Don't Forget the Basics!

Home | Canna Law Blog | Cannabis Trademarks: Don’t Forget the Basics! Table of Contents Toggle The registration of cannabis trademarks in the United States raises novel issues. This is an unsurprising result of the uneasy coexistence between expanding legality at the state level, and ongoing prohibition at the federal level. Cannabis businesses need to keep these issues on their radar when crafting brand strategies. At the same time, however, they should not neglect the trademark basics. Cannabis trademarks must be distinctive According to the Lanham Act (which governs federal trademark registrations), a trademark shall not be registered if "when used on or in connection with the goods of the applicant is merely descriptive." This is true of all trademarks, not just cannabis trademarks. A guitar maker cannot register the mark Guitar, just as a hemp grower cannot register the mark Hemp. This said, descriptiveness is relative. Hence that Lanham Act's qualification that a mark may not be registered if it is merely descriptive "when used on or in connection with" an applicant's goods. The term "guitar" is not descriptive in any way of a picture frame, and so registering the mark Guitar in connection to picture frames is fine. A guitar-shaped picture frame might be another story, since it describes a feature of the frame … but that's getting into the weeds. Similarity to Other Marks The Lanham Act also prohibits the registration of trademarks "which so resembles a [registered] mark … as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive." Perhaps the most important rationale for affording legal protection to trademarks in the first place is to give the consumer an assurance that a particular good or service belongs to an identified owner. This is true in the case of all trademarks, whether they are cannabis trademarks or fast-food trademarks. When you walk into a McDonald's, you want to know that you're walking into an establishment connected to the McDonald's Corporation, and not a random burger joint. Given this concern, obviously it is not possible for anyone other than McDonald's Corporation to register the McDonald's mark, or marks that closely resemble it, for that matter. As to where the exact line is drawn, well, that's again getting into the weeds! Notice that once again the Lanham Act clarifies that it is concerned with confusion, mistake, or deception caused by a mark "when used on or in connection with" an applicant's goods. While a Macdonald restaurant might confuse consumers, Macdonald tobacco is far less likely to cause confusion, and therefore the USPTO had no issues registering that mark for tobacco products (U.S. Reg. No. 5910691). As cannabis businesses come up with all sorts of cool brands, both for core products and merchandise, they need to be mindful of potential conflicts between their cannabis trademarks and already-registered marks. Use in Commerce U.S. law requires that a trademark be used in commerce before it can be registered. Trademark owners can apply to register their trademark before it is used in commerce (on what is known as intent-to-use (ITU) basis), but registration will not be completed until use is established to the satisfaction of the USPTO. This must be done within three years of the USPTO's preliminary approval of the application. Moreover, many U.S. states do not allow ITU applications. Again, these requirements apply to all trademarks, whether or not they are cannabis trademarks. Businesses should be mindful of use in commerce requirements when designing their brand strategy. The timing of trademark applications is one variable: it makes no sense to file a trademark application if it is clear that the use in commerce requirement will not be met during the relevant period, under any circumstances. However, product launch dates are also a variable. It is also important to keep in mind that some jurisdictions do not have use in commerce requirements. While it might make sense to hold up a U.S. application, a parallel application in the EU can proceed. Don't Forget the Basics! The bottom line is this: While cannabis trademarks present unique complexities, in many important ways they are just like any other trademark. Cannabis businesses should be aware of the special issues, but without neglecting the trademarking basics. Check Out Our Cannabis Law Services Share Twitter Facebook LinkedIn E-mail Comment Fred Rocafort Fred leads Harris Sliwoski’s intellectual property practice and is the coordinator of the firm’s international team. Much of Fred’s practice consists of helping cannabis businesses protect their brands. He also works with entrepreneurs and companies entering the Web3 space, a new frontier for IP law. Prior to joining Harris Sliwoski, Fred worked overseas for more than a decade, in both government and private sector roles. Fred is a regular contributor to the award-winning China Law Blog and Canna Law Blog. Fred began his career overseas as a U.S. consular officer in Guangzhou, China, where he advocated for fairer treatment of American companies and citizens in China and for stronger intellectual property rights enforcement. After entering the private sector, Fred worked at a Shanghai law firm as a foreign legal advisor and later joined one of the oldest American law firms in China, helping foreign companies navigate the Chinese legal environment. He also led the legal team at a Hong Kong-based brand protection consultancy, spending most of his time out in the field, protecting clients against counterfeiters and fraudsters in Greater China, Southeast Asia and Latin America. In addition to his IP work, as a native Spanish speaker, Fred works closely with different Harris Sliwoski teams on Latin America and Spain matters. Fred also provides advice to cannabis industry participants and other businesses on import and export transactions. Fred is an ardent supporter of FC Barcelona—and would be even in the absence of Catalan forebears who immigrated to Puerto Rico in the mid-1800s. 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