Let’s talk about trademarking in cannabis.
Hey, I’m Morgan Davis. I’m an attorney focused on cannabis and business in North Carolina. Let’s talk about how to keep your business protected and thriving.
What is a trademark?
A trademark is a symbol or a word or a number of other things, that you legally register to symbolize your business or your product. So why do cannabis businesses need trademarks? Trademarks help protect your business. They also make name disputes easier. For example, let’s say you’re Nike and somebody tries to use the swoosh. It’s obviously very well known that that’s a Nike product and it’s a registered trademark. So if they ever were to be challenged as to who it belongs to, it’s very easy to resolve. It creates goodwill and improves customer loyalty. It establishes a tangible asset that you can trade, sell, or assign a monetary value.
So let’s say you’re a cannabis business that’s trying to be bought out by a larger cannabis business, or you are partnering with another business. One of the things that happens in mergers and acquisitions like that is you talk about all the value of your assets. Trademark or intellectual property in general carries its own monetary value, so it can increase the value of your business overall. Lastly, it gives you the right to sue anybody who tries to take your trademark in federal court and potentially get damages. That means once you’ve got that registered protection, it’s an easier route for you to be able to pull up that shield of protection that’s been given to you. So how do you get a trademark? You get a trademark by filing an application with the US Patent Trademark Office or the USPTO. And once you go through the process of establishing that mark as yours, then they grant you a trademark and it’s registered federally and protects you across the United States.
Those trademarks are very specific to a category and a type of product.
So for example, if I’m a bagel shop, I open Zucker’s Bagels in Raleigh, North Carolina, and then somebody goes over to Seattle, Washington and opens Zucker’s furniture, they aren’t infringing on my trademark because it’s not the same category of product. However, let’s say you’re a cannabis business who has a specific type of vape pen that you’ve been using, and then somebody goes and through e-commerce starts selling the almost same exact vape pen with your same exact trademark, except maybe they changed the font, then that’s something where you would want the right to sue them from infringing upon your trademark if you’ve been able to successfully trademark either your product or your logo.
So: what types of trademarks are available for cannabis businesses?
Since the Federal Farm Bill in 2018 passed, hemp and hemp derived products like CBD are legal products. Therefore, like any other legal products in the United States, they should be able to be trademarked like any other good or service. That being said, be aware that there has been a lot of pushback from the USPTO about hemp and hemp-derived products. They are granting them and lots of companies have now been able to trademark, whether it’s their logo, their name, their slogan, or a specific product itself, or also their merchandise.
But that approval process has taken longer.
There are some applications that are still pending that have been pending for quite a while. So keep that in mind. If you’re a hemp or hemp-derived products business, that your trademark application might take a long time to process, and it also might be rejected at first. That’s one of the number one reasons that you should get an attorney to help you with this process. If you are a high THC cannabis company, technically trademarking is not available to you for your products. Why?
Because high THC cannabis is still federally illegal.
The USPTO is a federal agency, so they cannot protect something that is a federally illegal substance. That being said, there have been several cannabis companies, high THC cannabis companies who’ve been able to trademark their name or logo if it’s associated with something that’s not plant touching. Also, if you’re an ancillary business, meaning you don’t touch, you don’t touch the plan of any kind, and you just serve the cannabis industry, you also probably will be able to register for a trademark of some kind. What can a trademark protect? Names, logos, taglines, packaging, sounds, smells, and colors.
There are lots of different categories under each one of these types of protections. And whenever you do an application, you have to do an application for every single product category. This is a very regulated system, and so it’s not something you want to try and figure out on your own. You’ll waste time, you’ll waste money, and more importantly, you might lose out on the ability to register your trademark before someone else does. So this is absolutely something that you wanna get help with from an attorney. Give us a call today and we’ll talk about making your trademark an asset for your business.