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Four Key Trademark Tips for Cannabis Startups

Trademark protection is a valuable tool in securing the exclusive right to use a name or logo, and with it the ability to keep competitors from copying a unique name or design. Trademark registrations are also valuable assets for startups, including for valuations and acquisitions.

Despite the United States Patent and Trademark Office (USPTO) not currently granting federal trademark registrations for cannabis, startups in the cannabis space nonetheless have a number of federal and state trademark registration options available to them.

Here are four key tips that cannabis startups should consider when selecting, protecting, and registering their trademarks at the federal and state levels.

1. Select a unique trademark.

The first step is selecting a trademark. This might be a product name or logo. The key is that the trademark should be unique and non-descriptive of the goods or services it is associated with. The more unique and non-descriptive the trademark is, the easier it will be to protect and ultimately obtain federal and state trademark registrations for.

For example, at one end of the spectrum are fanciful, made up words (e.g., “Kodak”) or arbitrary words used in connection with entirely unrelated goods or services (e.g., “Old Crow” for whiskey) which offer some of the strongest possible trademarks. In the middle are suggestive trademarks, which bear a relationship to the goods or services, but only with some thought or imagination (e.g., “Eaze” for medical marijuana is suggestive of medical marijuana easing the pain). Suggestive trademarks are protectable, but are slightly weaker than fanciful or arbitrary trademarks.  Finally, at the opposite end of the spectrum, trademarks that are descriptive of their goods or services are the weakest (e.g., “World’s Best Bagels” for bagels is descriptive). The USPTO generally grants fanciful, arbitrary, and suggestive trademarks, but not descriptive trademarks.  Similarly, descriptive trademarks might not be registrable with some state trademark registries.

Cannabis startup companies should be cautious of selecting a cannabis slang term as the sole name of a product. Cannabis is associated with many slang terms, such as “pot,” “weed,” and “ganja,” among others.  Such slang terms are considered descriptive or generic for cannabis goods, and should not be chosen as the name of a cannabis product. For example, choosing “Weed” as the name of cannabis brownies would not be a wise idea.

If, however, a cannabis slang term is only part of a product name (e.g., “Good Deed Weed”), federal and/or state trademark registration may be available for the phrase as a whole. However, one would not be able to claim exclusive rights to the individual slang term (“Weed”) on its own.

2. Clear the trademark at the federal, state and common law levels.

Before adopting a new trademark, you will need to confirm that no other company is using a “confusingly similar” trademark for similar goods or services at the federal, state, and common law levels. Ignorance is not a defense for trademark infringement.

Simply confirming there are no federal or state trademark registrations for identical names or logos is not enough. Instead, companies should perform a comprehensive clearance search of the trademark federal and state databases for any arguably confusingly similar marks, including plurals, synonyms, phonetically similar marks, and variations in spelling, spacing, word order, and the like.

Moreover, since trademark rights in the United States are created through first use in commerce, it is critical to search not only the trademark federal and state databases, but also unregistered “common law” use.  This is accomplished by conducting a search that encompasses the internet, business name registers, domain name registers, industry publications, and other sources where similar marks may be used. Since many cannabis startups do not obtain federal or state trademark registrations, searching for common law use of the mark is especially important in the cannabis context.

3. Tools for filing federal and state trademark applications.

While the USPTO does not currently grant federal trademark registrations for marks that are used for goods or services that are illegal under federal law, trademark registration is available for related lawful goods or services.  Thus, while federal registration is not available for “cannabis,” since it is illegal under federal law, it is available for “vaping pipes,” “clothing,” “providing online information about cannabis,” and other related, lawful goods and services.  Crafting an appropriate goods and services description in a trademark application is important for ultimately obtaining a federal trademark registration in the cannabis space.

It’s much easier – and recommended – to also obtain state trademark registrations covering “cannabis” in those states that allow medicinal or recreational cannabis, even though the USPTO won’t allow such registrations at the federal level. However, each state’s trademark laws should be individually researched, because some states that allow medicinal or recreational cannabis may not allow cannabis trademarks.  For example, while California currently allows medicinal marijuana, it follows the USPTO in not allowing any cannabis trademarks (though cannabis trademarks for medicinal and recreational products will likely be allowed beginning in January 2018).

4. Enforce the trademarks after obtaining registrations.

Finally, after obtaining a trademark registration, a company must monitor the internet, federal and state trademark registries, and other sources where a competitor may attempt to use or register a confusingly similar trademark. Enforcement is particularly important in the cannabis space because new cannabis startups/trademarks are being created all the time. Failure to enforce trademark rights could reduce or even eliminate entirely the value of a company’s trademark registrations.

Susan Hollander and Paul Sousa

Susan Hollander and Paul Sousa

Susan Hollander is a partner in Venable’s Intellectual Property Litigation Group, with more than 25 years of experience in intellectual property litigation and counseling. She has significant experience with trademark, copyright, unfair competition, trade dress, and false advertising cases. She helps high-profile and leading brand-name clients in the technology, Internet, retail, consumer products, entertainment, finance, and healthcare industries prevent the genericism and dilution of their brands and has been responsible for several precedent-setting trademark decisions and jury verdicts.
Hollander frequently appears before the Patent and Trademark Office and the Trademark Trial and Appeal Board, as well as district and appellate courts throughout the United States. She also manages the international trademark portfolios for a diverse range of clients in various industries and develops comprehensive enforcement efforts in protecting and policing intellectual property rights. Additionally, she has experience overseeing trademark surveys and negotiating settlement and license agreements.

Paul Sousa is an associate in Venable’s Intellectual Property Group in San Francisco, focusing on trademarks and intellectual property matters. He advises clients on domestic and international clearance, cease and desist matters, UDRP complaints, DMCA takedowns, dispute resolution, and portfolio management. He also represents clients in trademark disputes before the Trademark Trial and Appeal Board as well as federal district court.

In addition, Sousa has federal and state court intellectual property litigation experience, including pre-filing investigation, motion practice, discovery, depositions, trial preparation and settlement. Sousa’s trademark and intellectual property litigation clients have included domestic and international corporate clients across a range of industries, including consumer electronics, software, finance, food and beverage, and fitness.

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