As a cannabis business owner you have probably invested quite a bit in your brand and creating a market for your product. The last thing you want is for someone else to tell you that you have to change your brand or you see someone using something very similar to your brand. We have all heard the horror stories of your friend receiving a cease and desist letter and had to spend thousands in legal fees and rebranding costs. The question we get often is how do we reduce this risk? While nothing is 100% there are ways to mitigate this risk so you don’t have to see your hard work be impacted.
For most businesses in more common industries we recommend conducting research to understand the options available for seeking trademark protection. Federal Trademarks are an effective way for business owners to protect their business name and/or logo nationwide. In short, a trademark is any work, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish goods of one manufacturer or seller from those of another and to indicate the source of the goods. Putting aside the requirements to even obtain a trademark, the fact is this option is an option for most businesses but not for Cannabis Industry.
Business owners in the cannabis industry seeking trademark protection for their brands face the unfortunate reality that the US Patent and Trademark Office is currently not registering trademarks for cannabis or cannabis related products, as marijuana remains a Schedule I controlled substance.
Our own Madhu Singh and Myles Harlow Kahn addressed this particular challenge recently at the Marijuana Business Association’s event “HOT BOX: The Best in Marijuana Design and Packaging 2016.”
Despite the indefinite moratorium on federal trademarks for cannabis-related businesses, there are still effective ways to protect brands and establish an identity for a product.
Here are five steps we strongly recommend you take:
- Start by creating a unique Brand. This may seem obvious but we still consider this the first step. To accomplish this avoid common phrases like canna, weed, kush, green, etc. This enables you to distinguish your brand and solidify your position in the market.
- Purchase all the domain names. If you own the .com for your business- that is great. However, we recommend purchasing all of the common gTLD options including .net, .org, .ly, .me. etc. The reason for this is because it shows your efforts in protecting your brand but also puts folks on notice who are doing a google search to see that you already own the domains in that area. It’s a simple and relatively affordable way to establish your brand assets.
- File for a State Trademark. Cannabis business owners can bolster investment in their brand by filing for state trademark protection. This type of protection is available at the state level through your local Secretary of State. You can only file for this state trademark in states that you operate in. For example if you are a Washington business then file with the Washington Secretary of State. The filing fee is only $50-$75.
- File a Name Reservation. If you plan on expanding your business outside of your state whether now or in the future, then we recommend filing a ‘state trademark name reservation’ in states where Cannabis is Legal. Why you might ask? Well this puts your name/brand in the system on reserve for anywhere from 3-5 years depending on the state. Should you ever open operations in any other state you can convert the reservation into a formal state trademark. Having your name on reserve in the state databases also serves to prevent businesses in that state from seeking protecting on a substantially similar brand.
- Social Media handles. And finally, own all the social media handles for your business regardless if you use them or not. Own the Twitter handle, Facebook page, Pinterest page, etc. This is for the same reason we sited in purchasing domain names. It establishes brand presence. Its great if you are using them but even if not, you don’t want someone else to purchase the handle.
While these steps don’t necessarily equate to federal protection of your brand, they are in the right step forward and will offer a lot of value especially given the investment you have made in your brand. Should anything ever change on a federal level, you will have put yourself in a strong position to obtain a trademark on your brand.
If you have any questions or would like to chat through some of these options feel free to contact our firm to discuss further.