By: Elek Miller, Esq.
For new businesses, particularly those entering a competitive new market, brand establishment and protection is a high priority. This is especially true for businesses offering cannabis-based goods and/or services, given the rapidly evolving legal and regulatory landscape for those businesses.
One important brand asset that almost all businesses will have (in one form or another) is a trademark. A trademark is a symbol, word, or phrase used in commerce to designate and identify the source of goods or services to which it is applied. These valuable assets can, and should, be protected. Cannabis-based businesses face unique challenges when establishing and protecting their trademarks, though. To begin with, as many readers may already be aware, such businesses currently cannot register a trademark for cannabis goods or services with the U.S. Patent and Trademark Office (the USPTO), because federal law prohibits registrations for goods/services that cannot lawfully be sold across state lines. However, there are certain steps that cannabis-based businesses can take to help establish and protect their brands.
Federal Registrations for Non-Cannabis-Based Goods/Services
While federal trademark registrations for cannabis-based goods or services are currently unavailable, the USPTO will, under certain circumstances, consider applications for non-cannabis-based goods/services sold and/or offered by cannabis-based businesses. This includes merchandise, like apparel, coffee mugs, and the like, as well as certain CBD-based goods/services (more on trademark applications for CBD-based goods/services in an upcoming post). So, cannabis-based businesses may want to consider pursuing federal trademark registrations for those goods/services that they can, in order to establish a foothold at the national level for their brands, and in the event cannabis is legalized at the federal level and the USPTO begins accepting trademark registration applications for cannabis-based goods/services.
State-based Trademark Registrations
Most states have laws protecting trademarks. In states where cannabis is legal, cannabis-based business may be able to register trademarks for their goods and services. And because the USPTO will not register marks for cannabis-based goods/services, state trademark registrations are much more valuable than they would otherwise be.
Although state registrations are geographically limited to the state of registration, they do tend to provide more extensive protection and remedies than common law rights, and so are an integral part of any brand development and protection strategy. We have had success registering a number of cannabis-based trademarks for clients at the state level, including what we understand is the first registration for a cannabis-based business in Maine.
Elek Miller practices in the areas of intellectual property and privacy and technology. In his intellectual property practice, Elek helps clients acquire and protect trademarks, copyrights, and other intellectual property. He is probably the first attorney in Maine to successfully register a state-level adult-use cannabis trademark. As the practice group leader for DWM’s Privacy & Data Security Group, he also advises clients on compliance with state and federal data privacy and security laws, helps them create and negotiate complex privacy and/or security-related technology agreements, and assists them with the development of information security and privacy programs (including data breach prevention, response, and crisis management) and drafting related policies and protocols.