The Path to Successful Trademark Registration for Cannabis Companies
As the majority of states throughout the nation have legalized marijuana, it’s safe to say the industry has become mainstream. And as more businesses establish and build cannabis companies in an increasingly competitive marketplace (including not just the sale of cannabis but also ancillary products and services), they’re looking for ways to develop and protect their brands. The federal ban against cannabis, however, presents obstacles to protection and enforcement of these companies’ trademarks on a national level. That is to say, federal trademark law prohibits the United States Patent and Trademark Office (“USPTO”) from granting registration for marks used in connection with goods or services that violate federal law. Despite the prohibition, through careful consideration, cannabis companies are finding ways to federally register and protect their marks.
Cannabis companies face two main statutory obstacles to federal registration. To register a mark, the applicant must claim and submit a specimen (i.e. proof) showing the mark is used in interstate commerce. Importantly, the applicant’s use must be lawful use in commerce (federally speaking) to support a USPTO trademark registration. When cannabis businesses apply to register their trademarks for cannabis-based goods and services, the USPTO routinely refuses these applications citing a violation of either the Controlled Substances Act (“CSA”) or the Food, Drug, and Cosmetics Act (“FDCA”). The CSA prohibits the distribution, sale, and possession of marijuana and marijuana-based preparations with some exception, as well as the sale of paraphernalia that enables manufacturing, processing, or consumption of any substance prohibited by the CSA. The FDCA, on the other hand, prohibits the distribution and sale of food and supplements that contain an active ingredient in an FDC-approved drug or is the subject of substantial clinical investigations that are publicly known. The FDA has then announced that it has commenced substantial clinical investigations of CBD, and that food products and supplements containing CBD violate the FDCA (see recent blog post on registration of CBD products for more information here).
With barriers presented by both the CSA and FDCA, one might wonder how cannabis companies are still obtaining federal registrations and brand protection on a national level. Successful registrations take an increasingly careful understanding of the statutory impediments to registration, the company’s offerings, and the ability to strategically draft applications for registration. Applications for registration are sometimes filed for unlawful cannabis goods or services, in hopes that the statutory bars to registration will be lifted while the applications are pending (for example, this was a particularly popular strategy for CBD pending the approval of the Farm Bill). It should be noted, however, that this strategy is not without significant risk. Applications are also typically filed for legal goods and services related to cannabis goods or services, with the idea that these registrations will help enforce rights against third parties using similar marks in the cannabis industry. In either case, applicants should expect an examiner at the USPTO to review the applicant’s publicly available materials (such as their website) to see if the application promotes the unlawful purpose of goods, and review these applications with increased scrutiny.
Cannabis companies are also utilizing state registrations where they operate, and where cannabis is legal. These applications are typically much simpler, straight forward, and cost effective than applications before the USPTO. The benefits of such state registrations depend on the state, and are more limited than federal registrations, but remain useful and should not be overlooked.
At SK&S Law Group, Christina Saunders has substantial experience representing cannabis companies – both startups and publicly traded companies (Canada) alike to help build, strategize, and protect their intellectual property portfolios, and has successfully registered dozens of federal registrations on behalf of cannabis companies. Have questions? Please contact Christina by email at firstname.lastname@example.org, or by telephone at 303-396-0270.