Registering a federal trademark is still difficult for cannabis companies, according to intellectual property attorneys who work with the industry.
Ed Weisz, a partner at Cozen O’Connor in New York, said the federal patent law allows for patents to be placed on plants. So different strains of cannabis can be registered with the U.S. Patent and Trademark Office. He explained getting a strain of cannabis patented does not present any unique problems other than the issues every kind of product goes through in the middle of the patent application process.
“The trademark space is trickier than the patent space,” Weisz explained. “Primarily that’s due to the fact that patent laws allow people to apply for and obtain plant patents. You can in effect obtain patents on a new cannabis strain or something.”
He explained federal law still prohibits people from obtaining a trademark for “illegal activities.”
“Because of that and because of the federal law still considers cannabis to be illegal activity and illegal products, you have a situation where it’s approved at certain state levels but it’s still not approved at the federal level,” Weisz said.
However, Nuzayra Haque, the principal attorney at NH Legal in Los Angeles, said when she started working on cannabis-related IP issues, the attorneys at the USPTO would not even have a conversation about trademarking a cannabis company.
She said when she first started working with cannabis companies she had to submit several trademark applications with the USPTO and work with the examining attorneys to figure out what parts of the cannabis business could and could not be trademarked.
“It was over time that we had to work with the USPTO and get them comfortable with the idea that cannabis businesses are not shady, dodgy businesses like they used to be,” Haque said.
She said over the past three years the examining attorneys have seen it as a burgeoning industry and are a lot more comfortable to grant companies federal trademark registration. She said it took several conversations and legal briefings to get examining attorneys to understand that not every part of the cannabis business has to do with selling.
“It has been a struggle on both ends,” she explained. “Convincing the clients that they need to get IP protection if they want to be taken seriously as a brand and on the other hand it was working out with the USPTO on how can we get these registrations.”
She said there is still some work to be done in terms of there being less of a back-and-forth between the USPTO and cannabis companies.
“But at least now we’re at a point where we can talk about seriously getting registrations and talk about protecting intellectual property of cannabis brands,” Haque said.
Right now, things like paraphernalia cannot be trademarked because it is something that helps in the consumption of marijuana.
“As far as goods are concerned, CBD goods. You can have a realistic chance of getting those registered as long as they are not edibles,” Haque explained.
Weisz said his advice to cannabis companies is to get a trademark at the state level. He also said companies may want to adopt a strategy where they get a trademark on something else they are selling.
“A strategy may be to file [a trademark application] on tangential products,” Weisz explained.
Although, Michael Brubaker, the founder and principal of Cannapatents in Seattle, said he doesn’t recommend companies get a federal trademark.
“It would be really nice if they had a federal trademark for their company, but unless I can see that they have a business that they can separate from cannabis, I don’t encourage them to do it because the USPTO will go and look you up on Facebook,” Brubaker explained. “They’re going to look at your company and if your company is doing business in cannabis, as long as there is a trace of it, they’re going to see it and they’re going to say sorry.”
He did say, however, he does encourage cannabis companies to have state trademarks on their brands.
Even the issue of obtaining a state trademark has come a long way, Haque explained. She said when California first allowed medical marijuana legally in 1996, it was difficult to have a trademark application approved.
“The state didn’t want to give it to you,” she explained. “In California it was very, very rigid. The classes were predetermined classes and if your goods and services didn’t fall under one of those classes, which there was no class for cannabis, your mark is not getting registered.”