How African American-owned Cannabis Brands Can Skirt Federal Trademarks

By BCB Staff Writer

In the aftershocks of a San Diego ban on billboard advertising for canna-businesses, it’s essential to be aware of marketing and advertising limitations placed upon cannabis industry business owners. If conventional marketing strategies are insufficient for marijuana-related businesses (MRBs), how can these companies maintain branding initiatives?

It begins with trademark requirements. The United States Patent and Trademark Office is, as it sounds, a government agency. Via the Lawful Use Rule, found in the Trademark Act Sections 1 and 45, until cannabis is no longer classified as a Schedule 1 drug, and an integral part of the Controlled Substance Act, nothing related to any of its uses can be trademarked, nor can any trade secrets or patents be secured. Essentially, this means that any trademark application, for cannabis-related products or byproducts, that crosses the desk of a USPTO attorney will be immediately denied registration.

The Lanham (Trademark) Act serves to protect trademark infringement, trademark dilution, and false advertising

The Lanham (Trademark) Act, signed by President Truman in 1946 and effect a year later, serves to protect trademark infringement, trademark dilution, and false advertising; the Lanham Act also requires trademarks be used in the legal commerce sector. This is an apparent exclusionary nod to cannabis sector entrepreneurs who are trying desperately to secure branding rights for logos, titles, and phrases, among other content.

Naturally, there are workarounds to this stringent law. For example, if you sell cannabis-infused gummies as well as regular gummies, you could file an ancillary goods trademark for the non-infused gummies and then assert a “likelihood of confusion” argument against potential infringers.

Regarding hemp products, the agricultural nature of the production allows for trademark options, but an experienced hemp-knowledgeable attorney on counsel is suggested; trademark and intellectual property rights for hemp-related materials and products are still hazy.

For those residing in California, the trademark law varies. There are discrepancies between federal and CA state trademark laws, which create a caveat for California canna-businesses to register branding efforts. To register your trademark, file the registration as if the product does not contain a Schedule 1 drug. Some ideal classification codes to opt for are Classification Codes 5, 31, 34, 35, or 39.

For those not dealing with legal, state-based loopholes, it’s advised to instead focus on copyright laws. Copywritten items are protected for the life of the author, plus 70 years, which far exceeds the six years a trademark protects. Dealing with the intellectual property also allows for more leeway; copyrights protect literary, dramatic, musical, and artistic works.

In the cannabis industry, this pertains to pictures, product descriptions, and written content on a canna-business’ website, as well as product tags, labels, packaging, logos, instructional materials, and product design. This is a helpful step for entrepreneurs because the online registration process for copyright material is quick, inexpensive, and success asserts market dominance.

Copywritten content immediately entitles the holder to the right to sue for infringement, automatic proof of copyright ownership, and the ability to additionally sue for statutory damages and/or attorney’s fees.

Although there is certainly more potential for cannabis businesses to succeed when registering copyrights than trademarks, it’s important to remember that under the Copyright Act, federal courts have jurisdiction over any infringement case.

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