Cannabis Law Prof Blog

Editor: Franklin G. Snyder
Texas A&M University
School of Law

Thursday, October 11, 2018

Trademarks, Patents, and Copyrights, Oh My! Protecting Brand Logos in the Cannabis Industry

IMG_2755Cannabis-related business owners could find their brand name and logo designs at risk for imitation by competitors due to federal requirements that the trademark is related to items lawfully used in commerce. Marijuana remains illegal under federal law and its classification as a schedule one drug renders the substance unlawful for use in commerce and can create intellectual property nightmares for business owners in states that have legalized marijuana use.

In a recent article for the National Law Review, lawyer Gene Markin gave an overview of the complications those in the cannabis industry face in trying to protect their brand names and logos from hijacking competitors. Markin offers advice for overcoming the trademark prohibition that arises from marijuana’s schedule one status:

State trademark protection is one option. Where a federal trademark registration is protected nationwide, a state trademark registration has statewide protection. Of course, this depends on the state in which the business is being conducted. It is a lot easier to make “lawful use” of cannabis goods and services in states where it is legal to do so. Some states require the owner of the trademark to use the mark prior to registering. Common law trademark rights, however, are more easily attainable. To obtain common law trademark rights, one must simply use a mark in commerce. Under common law, the owner is given protection within the geographic area in which the trademark is used. Consequently, under common law, there is little to no protection against an infringer who uses the mark in a different territory.

Another suggestion is to file for federal trademark protection for goods and/or services ancillary to cannabis sales, provided those are federally legal. For example, one could file a federal trademark application to protect the use of his or her mark on apparel or accessories. Clothing, smoker’s articles, or products that cultivate and package cannabis can be federally protected. This way, such products can sufficiently support an infringement claim against future businesses that use a similar mark on their own goods/services. While ancillary registration cannot be used to protect the core cannabis products, it would at least protect the brand name or logo from infringement and allow the trademark owner to expand the registration to cannabis products and services once the federal law changes.

Markin explains that copyrights and patents are also potential solutions:

Unlike trademark law, copyright law does not require “legal use” in order to obtain intellectual property protection. To obtain copyright protection, the content, such as logos, advertisements, product descriptions, photos, website layouts, etc., must (1) be original to the author, (2) have a minimal level of creativity, and (3) be fixed in tangible form that is sufficiently permanent to be reproduced. Registration is not required but doing so would afford the copyright holder significant benefits, particularly the right to sue an infringer.

Patent protection is another viable option. The fact that marijuana is a Schedule I controlled substance is not a bar to obtaining a patent, whether a utility patent or a design patent. For utility patent protection, the invention that is to be protected must be new and useful. A design patent, on the other hand, protects a manufactured object or product’s original ornamentation that is visible when the product is engaged in its intended use.

With some clever maneuvering, marijuana businesses can likely find ways to protect its brand designs and reputation now and be prepared to expand protections of their intellectual property if and when federal decriminalization of marijuana takes place.

--Ashley Goldman

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