- Posted on: Sep 3 2021
By: Farzad Panjshiri
Trademark protection is important for all industries; this also includes the cannabis industry. While the cannabis industry is quickly evolving, it is even more important for cannabis businesses to protect their brands. Cannabis is currently legalized in 18 states, the District of Columbia, the Northern Mariana Islands, and Guam, but it is not legalized on a federal level (not yet at least), which creates ambiguity and even contradictory practice in this realm. The ambiguity is also applicable to the trademark practice in the cannabis industry. It is important to differentiate between what can be protected under trademark law and what cannot.
A trademark registration will be denied for products that will be unlawfully used in commerce. The 2018 Farm Bill changed the federal registrability of cannabis and CBD products at the US Patent and Trademark Office (“USPTO”). Cannabis and its byproducts that comprise 0.3% or lower THC levels are no longer federally unlawful and may reach trademark protection at the USPTO. Products containing cannabis that are regulated by the US Food and Drug Administration (“FDA”) would have to comply with further regulations to achieve federal trademark registration at the USPTO.
Additionally, it is important to mention that secondary products and services that are non-plant-touching or do not involve the sale of cannabis products in commerce may get federal trademark protection with the USPTO. Strategically it is important for cannabis businesses to protect their brands on a federal level where possible and eventually advance their goods/services of the trademark in the future.
Besides federal trademark protection, cannabis businesses have the opportunity to register a “State Trademark” in states that have legalized cannabis or have common law trademark rights available.
A state trademark registration may only protect the owner in the registering state, which might suffice in certain cases. For example, small cannabis businesses with state trademarks would be protected from local competitors or expanding competitors entering their state using a confusingly similar mark.
In the current state of affairs, cannabis businesses should seek trademark registration for those portions available for trademark protection, especially in light of the recent developments in the cannabis industry and in light of long-term brand protection.
Evidently, federal and/or state-level trademark laws and rules of trademark registration should not be disregarded as they pertain to every trademark application. Choosing a trademark for your business is crucial and should be taken into consideration in regard to long-term brand protection goals. If you have questions or are unsure whether your goods or services qualify for trademark protection, speak with a trademark attorney to help you understand and guide you on what is best for your business.
To learn more about Trademark Law, visit our Trademarks & Branding page.
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David Ludwig is a partner at Dunlap Bennett & Ludwig. Mr. Ludwig’s practice focuses on civil litigation in the areas of patent, trademark, copyright, internet / domain names, commercial transactions, government contracts, community associations, and bankruptcy law / creditors’ rights, as well as trademark and copyright prosecution, and corporate and small business law. He is co-chair of the firm’s litigation group, supervising several lawyers, and he has served as an attorney for local and national clients in federal and state court litigation and arbitration matters, as well as in bankruptcy proceedings, TTAB disputes (trademark Notice of Opposition and trademark Petition to Cancel proceedings), domain name disputes (ACPA, UDRP, and URS proceedings), government contract bid protests and Tucker Act litigation, and numerous other forums and proceedings.
To learn how Mr. Ludwig can assist you with your legal needs, click here.
Posted in: Intellectual Property - Trademarks