As more states move to legalize marijuana for medical and even recreational use, new businesses and industries are popping up to meet the growing demand for cannabis in the United States.
Yet, one door that continues to remain closed for entrepreneurs and businesses in the marijuana industry is that of intellectual property rights, specifically the inability to federally register trademarks to protect a company’s name or brand.
In the United States, a trademark can only be registered federally if the use of the mark in commerce is “lawful.” Currently, the federal Controlled Substance Act prohibits the manufacturing, distributing, dispensing, and possessing of controlled substances, which still includes Marijuana. Because of this classification, it has been difficult, if not impossible, for cannabis businesses and growers to have their trademarks approved by the USPTO.
However, that doesn’t necessarily mean that cannabis related marks can’t be protected on some level. For instance, if you reside in a state where the sale and use of marijuana is legal, such as Colorado, Oregon, or Washington, you may be able to apply for a trademark through the state.
If you live in a state that does not offer trademark registration for cannabis related marks, you may instead be able to draw on common law rights to assert ownership of your mark. Common law trademark rights may not have a “lawful use” requirement and do not have to be used in interstate commerce to receive protection under common law.
Asserting common law trademark rights can be complicated, but in general, legal protection goes to the business who used the trademark first. However, you can only enforce a common law or unregistered trademark in the geographic area where the trademark is used. For example, if a Southern California company begins using their cannabis-related company name or logo in commerce before anyone else in the area, they would be able to assert their common law rights against third-party infringers who may attempt to use their name within that immediate area. But, that same business would not be successful in enforcing their rights in Colorado as it is too far away geographically.
Because of these nuances and complexities, cannabis related business owners should work with an intellectual property lawyer to ensure that they are taking advantage of all areas of protection as the industry changes and the laws in the country change. A qualified IP attorney will be able to stay up to date on new opportunities available to the cannabis-related business to ensure first and early protection as soon as new doors open on state and federal levels.
If you have a marijuana-related business and you’d like to discuss the current strategies that may be available to protect your business or brand, we invite you to contact our Intellectual Property attorneys at 888-666-0062 and ask to schedule a consultation.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.
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