The registration of cannabis trademarks in the United States raises novel issues. This is an unsurprising result of the uneasy coexistence between expanding legality at the state level, and ongoing prohibition at the federal level. Cannabis businesses need to keep these issues on their radar when crafting brand strategies. At the same time, however, they should not neglect the trademark basics.

Cannabis trademarks must be distinctive

According to the Lanham Act (which governs federal trademark registrations), a trademark shall not be registered if “when used on or in connection with the goods of the applicant is merely descriptive.” This is true of all trademarks, not just cannabis trademarks. A guitar maker cannot register the mark Guitar, just as a hemp grower cannot register the mark Hemp.

This said, descriptiveness is relative. Hence that Lanham Act’s qualification that a mark may not be registered if it is merely descriptive “when used on or in connection with” an applicant’s goods. The term “guitar” is not descriptive in any way of a picture frame, and so registering the mark Guitar in connection to picture frames is fine. A guitar-shaped picture frame might be another story, since it describes a feature of the frame … but that’s getting into the weeds.

Similarity to Other Marks

The Lanham Act also prohibits the registration of trademarks “which so resembles a [registered] mark … as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” Perhaps the most important rationale for affording legal protection to trademarks in the first place is to give the consumer an assurance that a particular good or service belongs to an identified owner. This is true in the case of all trademarks, whether they are cannabis trademarks or fast-food trademarks.

When you walk into a McDonald’s, you want to know that you’re walking into an establishment connected to the McDonald’s Corporation, and not a random burger joint. Given this concern, obviously it is not possible for anyone other than McDonald’s Corporation to register the McDonald’s mark, or marks that closely resemble it, for that matter. As to where the exact line is drawn, well, that’s again getting into the weeds!

Notice that once again the Lanham Act clarifies that it is concerned with confusion, mistake, or deception caused by a mark “when used on or in connection with” an applicant’s goods. While a Macdonald restaurant might confuse consumers, Macdonald tobacco is far less likely to cause confusion, and therefore the USPTO had no issues registering that mark for tobacco products (U.S. Reg. No. 5910691).

As cannabis businesses come up with all sorts of cool brands, both for core products and merchandise, they need to be mindful of potential conflicts between their cannabis trademarks and already-registered marks.

Use in Commerce

U.S. law requires that a trademark be used in commerce before it can be registered. Trademark owners can apply to register their trademark before it is used in commerce (on what is known as intent-to-use (ITU) basis), but registration will not be completed until use is established to the satisfaction of the USPTO. This must be done within three years of the USPTO’s preliminary approval of the application. Moreover, many U.S. states do not allow ITU applications. Again, these requirements apply to all trademarks, whether or not they are cannabis trademarks.

Businesses should be mindful of use in commerce requirements when designing their brand strategy. The timing of trademark applications is one variable: it makes no sense to file a trademark application if it is clear that the use in commerce requirement will not be met during the relevant period, under any circumstances. However, product launch dates are also a variable. It is also important to keep in mind that some jurisdictions do not have use in commerce requirements. While it might make sense to hold up a U.S. application, a parallel application in the EU can proceed.

Don’t Forget the Basics!

The bottom line is this: While cannabis trademarks present unique complexities, in many important ways they are just like any other trademark. Cannabis businesses should be aware of the special issues, but without neglecting the trademarking basics.

Cannabis Trademarks: Don’t Forget the Basics! on Harris Bricken.