March 31, 2021

Trademark Protection for Cannabis Businesses

A trademark is a word, name, or symbol used in commerce to identify and distinguish the goods and services of one company from those manufactured, sold, and/or provided by others. Trademarks help businesses create and maintain a unique brand and often represent a company’s reputation, brand identity, and goodwill. 

Trademark infringement occurs when another business or individual uses the same mark or one that is confusingly similar without permission. Whatever the case, a lawsuit can be filed to defend an owner’s mark. Protecting trademarks and preventing or stopping use by competitors has real-world financial value.

Unfortunately, as discussed in a previous post, the United States Patent and Trademark Office (“USPTO”) historically and currently does not register trademarks for marijuana strains, plants or seeds, marijuana dispensaries or dispensary services, or marijuana-related products. This is because federal registration is only available for goods or services that are lawfully in interstate commerce, and the USPTO maintains that marijuana is illegal as a Schedule I drug under the Controlled Substances Act.

Thankfully, states that have legalized marijuana offer state-level intellectual property protections and maintain trademark registries. California—the world’s fifth-largest economy and owner of the most robust cannabis market in the United States—is one such state. California registrations are useful for protecting trademark rights even if those registrations are enforceable only in California.

On January 1, 2018, California began allowing the registration of cannabis and cannabis-related trademarks; companies can apply to register cannabis-related trademarks with the California Secretary of State’s Office, which is the entity responsible for registering trademarks in the state.

There are two requirements for California trademark registration.

First, the mark must be lawfully used in commerce. For cannabis operators, this means that a business has to be making actual, lawful use of the mark (i.e., making bona fide sales of the goods or services protected by the mark) in California state commerce at the time of the application. 

Accordingly, a company must be licensed for cannabis operations by one of California’s three cannabis licensing agencies to be able to use and enforce a mark legally. Applicants should thus ensure that any local and state licenses required to conduct their cannabis activities in California have been obtained prior to seeking registration.

Second, the description of goods or services for which the trademark is used must match one of the classifications of goods and services adopted by the USPTO.

The USPTO has an Identification of Goods and Services Manual which lists pre-approved descriptions of goods and services eligible for trademark protection. The California Secretary of State will only accept applications with descriptions that fit within existing classification codes from the USPTO’s Identification of Goods and Services Manual.

In deciding which classification code to use, an applicant needs to “choose the code(s) which best categorize the good(s) or service(s) associated with their Trademark as if these goods or services did not involve cannabis.” Therefore, for example, an applicant trying to register a trademark for cannabis plants can choose “Classification Code 31,” which is the designated code for “Natural Agricultural Products.” As another example, an applicant can use “Classification Code 35,” which is the designated code for “Advertising and Business,” for service marks for retail stores selling cannabis products.

If your business requires assistance navigating California’s intellectual property laws and regulations, contact Manzuri Law’s California Cannabis intellectual property attorneys today.

Disclaimer: This article has been prepared and published for informational purposes only and is not offered, nor should be construed, as legal advice.

Contact one of our cannabis law firm specialists today by phone at 310-912-2960 or online.