How To Protect Your Cannabis Brand, Part III

If you want to eventually own a national cannabis/marijuana brand, you should take steps to establish and protect your trademarks now. Since cannabis and cannabis paraphernalia remain federally controlled, the United States Patent and Trademark Office will not issue a federal trademark registration for products that fall into either category.

However, it is possible to obtain protection for your trademarks in those states that have legalized the medical and/or recreational use of cannabis. Here is what you should do now:

  • If you have not yet begun using a particular trademark but intend to do so in the near future, you should file a “trademark reservation” with the appropriate authority in those states that permit trademark reservations.
  • Begin using your trademark in each state as soon as possible. Once you have begun using your trademark, you should register your trademark with the appropriate state authority in each state as soon as possible. You should use the appropriate form to (i) specify your trademark (word, logo, etc.), (ii) the goods for which the trademark has been used in the state, (iii) the date of first use in commerce in that state, and (iv) include the required number of specimens of actual use of your trademark.  You should then sign the form and submit it with the required fee.
  • You can also register your trade name (company name) in each state where you are legally operating as a cannabis grower, dispensary or seller of cannabis paraphernalia. This may afford you some protection for your brand within the states in question (but should be done in addition to, not instead of, a state trademark registration).

Taking these steps now may also be the basis for your being able to obtain broader trademark rights if and when federal law on marijuana changes.

Important note: If you hire an artist or other outside contractor to create and/or develop a logo or other graphic element that you intend to use as a trademark, you should sign a written contract with that artist or outside contractor which specifies, among other things, that you (and not the artist or contractor) own all of the trademark, copyright, and other intellectual property rights in the logo or graphic element. Failing to have such a contract can and often does lead to ownership disputes down the road, which is the last thing you want or need.