While cannabis brands need to be mindful of cannabis-specific trademark issues, they must also pay attention to trademarking basics. Back in January, we discussed three key trademark issues: distinctiveness, likelihood of confusion, and application bases. Today we continue our exploration of trademark basics, looking at the importance of choosing goods and services thoughtfully, in order to meet use in commerce requirements.
How to show use in commerce
In our previous post on the subject, we explained that a trademark will not be registered by the USPTO until it is used in commerce. To demonstrate use in commerce, the trademark applicant must produce a specimen, defined by the USPTO as “a sample of your trademark as used in commerce.” This is true of all trademarks, regardless of whether they are cannabis trademarks, software trademarks or wicker basket trademarks.
For goods, the most common form of specimen is a photo of a good bearing the trademark. Websites are popular specimens for services.
Keep use in commerce requirements in mind from the start
As many readers of this blog will know, the USPTO will not register trademarks for goods and services that are illegal at the federal level. This of course includes marijuana, which is a controlled substance, but also many CBD products than run afoul of the Federal Food, Drug, and Cosmetic Act (FDCA).
For cannabis brands wishing to obtain some trademark protection, one strategy is to seek registration of their trademarks for legal goods and services. In some cases, this trademarking strategy is consistent with overall business strategy. For example, many brands look to merch as an important revenue stream, in which case it makes all the sense in the world to register the trademark for, as the case may be, apparel, sunglasses, lighters, and so on.
The universe of legal goods and services is vast, giving brands a range of options. However, when describing goods and services on their applications, brands should not lose sight of the eventual requirement to show use in commerce for each class of goods and services. When selecting goods and services, brands should also be thinking of the practicalities of producing and offering same, in order to show use in commerce.
“Safety schools” for showing use in commerce
In an ideal world, the need to show use in commerce would not drive any brand’s business activities; instead, specimens should be the natural byproduct of regular operations. Yet the reality is that many brands find themselves specimen-less when they get a Notice of Allowance (NOA) from the USPTO. This is a particular risk when there is a disconnect between a brand’s core business and their trademark applications–an inevitably when that core business is federally unlawful.
It is true that at the point where they get a NOA, brands still have three years to submit their specimens. However, during that time their trademark remains unregistered. Moreover, for a busy brand, three years can go by quickly.
For these reasons, brands should think strategically of the goods and services described on their trademark applications. Brands should also ensure that applications cover at least some goods and services that they can, with a high degree of certainty, roll out over the next 3-4 years–keeping in mind that it might require a detour of sorts from their core business.
Think of these goods and services as safety schools for the brand. Perhaps they are not what drove the creation of the brand in the first place. They may not account for a significant part of the brand’s revenues. But they can still play a key role in the protection of the brand’s intellectual property.