By: Gary Michael Smith, Esq.
It is difficult to argue against the marketing power behind the Nike swoosh or the Starbucks mermaid. Without a word, you know the products these businesses sell and the quality you can expect from them. A trademark is an asset that draws in customers and revenue. Any businessperson will tell you a good trademark and a good tradename are indispensable to building a brand.
In recognition of this value, Federal law grants the right to register trademarks and tradenames, and the law gives registrants amazing powers to protect their registrations with hefty presumed damages, injunctive relief, access to Federal courts, and even possible criminal charges against infringers. However, for all the right reasons, Federal trademark registration is forbidden to criminal enterprises.
For example, you cannot run a murder-for-hire service and trademark your kitschy logo of a dead guy wearing cement booties. If your commercial endeavor is crime, there is no trademark protection available. This interpretation has hampered trademarking in the legal cannabis world. However, the 2018 Farm Bill brought us Federal legalization of hemp.
Contrasted with its much more exciting cousin (marijuana), hemp is defined under federal law as cannabis with less than .3% THC content, and hemp is not a Schedule 1 drug. As a result of hemp’s legalization, hemp businesses may pursue Federal trademark and tradename registration.
Consistent with this change in Federal law, the United States Patent and Trademark Office (USPTO) amended its protocols on how it will handle trademarks for hemp businesses. According to the USPTO, registration will be considered, so long as the hemp business falls outside the Food and Drug Administration’s regulations of hemp-derived CBD as a food or beverage ingredient. [Sorry, CBD people, your time has not yet come.]
Although the FDA has yet to resolve its issues with CBD, which is holding up further positive changes at USPTO, businesses that participate in hemp can still pursue registration on a product-by-product basis. For example, if you are a dispensary that produces both marijuana and hemp products, you can pursue Federal registration for your (non-CBD-as-food) hemp products, and your participation in marijuana is not a disqualifier. You just won’t be able to register your marijuana marks or your CBD-as-food marks.
If you are interested in pursuing a Federal trademark registration, you will have to use (or have ability to prove imminent intent to use) the proposed mark in actual interstate commerce. If you are not actually using the mark, you do not qualify for Federal registration. If you are not using the mark across State lines, you do not qualify for Federal registration.
If you meet these criteria, pop into your lawyer’s office and start getting your registrations filed. Between then and now, lobby your Congresspeople to change Federal law to bring marijuana under the umbrella too.
—Gary Michael Smith is an attorney and arbitrator and partner in the Phoenix Arizona-based Smith Saks Kuzmich PLC. He is also a founding director and current president of the Arizona Cannabis Bar Association. He can be reached at smith@sskattorneys.com.