Updated: Jul 4, 2022
The legalization of cannabis across the country creates both new opportunities for business and new risks. Read on for tips on name selection and protection to create value for your brand and minimize risks.
DO: Select a Strong Mark
When choosing a trademark to identify your product, we generally recommend working up a shortlist of marks. In doing so, consider the strength of each potential mark. This is important because stronger marks are easier to register and enforce. For example, if you choose a term that is the generic name of the product, like APPLE for apples, you will not be able to protect it because everyone is entitled to use generic names to identify their products.
If you choose a descriptive mark, which directly communicates some quality or attribute of the product, it will be more difficult to register and enforce. An example is SPEEDY for a car wash. It’s preferable to choose a suggestive mark, which indirectly suggests a quality or characteristic of the goods or services and requires a mental leap to understand the goods or services. An example is WET ONES for towelettes. If possible, try to choose an arbitrary mark or coined term, like APPLE for computers or EXXON for oil. These are the strongest marks and easiest to register and enforce. For more information about choosing a strong mark, check out our FAQ here.
DO: Avoid Infringing Someone Else’s Rights
Once you’ve worked up a shortlist of marks, the next step is to investigate whether someone else is using it by performing a trademark search. Informal, preliminary searches can be conducted using the database of the United States Patent and Trademark Office (USPTO) and web searching. Full trademark searches can be performed by contracting with a professional vendor, who searches additional sources and conducts a human review. An attorney's review and opinion on a full search can reduce the risk of a willful infringement claim while also providing invaluable guidance. You can learn more about trademark searches in our blog post here.
We recommend that you do a trademark search before you launch your product or begin marketing it. This will avoid the risk of starting down a path that you may have to walk back, and it can save substantial time, energy, and money if you have to choose an alternative, redesign marketing materials, and rebrand products.
DO: Pursue Trademark Protection
In the United States, trademarks can be protected by federal and state registrations, as well as under the common law. Obtaining a registration is advantageous as it provides certain presumptions not available under state or common law.
One key benefit of a federal trademark registration is that it provides nationwide rights. However, the USPTO will not issue a federal registration for cannabis because the goods do not comply with federal laws.
As a result, we recommend a multifaceted approach. For example, federal registrations are available for CBD if the goods are specifically limited to CBD derived from hemp and the THC concentration is limited to .3 percent on a dry weight basis. You may be able to obtain a federal registration for ancillary goods and services. In addition, you can seek a state trademark registration and rely on your common law rights.
Now, onto the warnings:
DON’T: Copy Another Business’s Mark or Packaging
In addition to avoiding copying someone else’s trademark, it’s also important to avoid copying packaging. Copycat products and packaging have led to numerous lawsuits. To learn more about intellectual property protection for candy and some of the copycat lawsuits, check out this New York Times article in which I am quoted extensively.
Devoting the resources to develop your own brand name and packaging is generally a worthwhile investment that can both avoid the risks of infringement and create a recognizable and protectable brand.
DON’T: Target Children
It’s tempting to consider edible cannabis products as “candy for adults.” However, it’s critical to avoid packaging that appears to target children. Children’s safety was a key theme in The New York Times article and many of the lawsuits.
DON’T: Go It Alone
Experienced trademark and branding counsel can help you choose a mark that doesn’t infringe anyone’s rights, protect it through registration, and review your packaging for compliance. You don’t have to go it alone. Contact us at Mertzel Law for expert handling of your creating your cannabis packaging.