Barriers to obtaining brand protection for cannabis-related marks are high. The federal illegality of marijuana under the Controlled Substances Act makes brand protection and trademark law particularly complex for the cannabis industry. As long as marijuana remains a Schedule I controlled substance, federal trademark protection will not be available for goods or services related to the marijuana industry. For states that have legalized marijuana, state trademark protection may be available. Navigating state and federal trademark laws to protect cannabis related marks is possible, but advanced trademark strategies are needed. This is an area where professional guidance can provide a good return on investment.
There are three ways in which a brand owner can establish trademark rights:
- Establishing common law trademark rights in its existing market by using the mark in connection with their goods or services in commerce;
- By registering the mark with one or more state trademark registries to expand rights to protect the mark in the entire states where it does business; and
- By registering the mark with the United States Patent and Trademark Office to protect the mark in the entire United States.
Since federal trademark registration is not available for goods directly involving cannabis, businesses can obtain registration for other legal goods or services that they sell. If another cannabis industry competitor attempts to use the brand mark in association with goods and services not included in the registration (products and services relating to marijuana), the mark owner can then assert a “likelihood of confusion” argument against any would-be infringers.
The brand owner can also use state trademark registration in each state it does business. Though the protection afforded by a state trademark is geographically limited to the state of the registration, they provide enhanced legal remedies over common law rights.
Both of these strategies are a good “plan B” brand protection strategy until federal registration becomes available to the cannabis industry.