State Trademark Registration: Is It Worth It? You Should Work It.

As a business owner, you likely already understand the importance of protecting your brand. Among other things, a strong brand means greater value and increased customer loyalty. But as a canna-business owner, given the tensions between state and federal regulations, brand protection can be challenging, particularly when it comes to trademark law.

            You may know how difficult it is to obtain a federal trademark registration for cannabis products, and perhaps you’ve given up pursuing one. But have you considered a state trademark registration?

Green Crack(down): FDA to Enforce Against Cannabis Health Claims?

Commissioner Scott Gottlieb of the U.S. Food and Drug Administration (FDA) thinks it’s “high time to start looking at rules around [cannabis].” Given that twenty-nine states and Washington, D.C. have already legalized medical marijuana, Gottlieb’s concern is a little late, but it signals change is afoot.

From a branding and advertising perspective, what might this mean? For now, that depends on a company’s labeling and advertising. The FDA has extensive power to regulate food and drugs, and it determines whether something is a food or drug by looking to product labels and advertisements. If a label or advertisement makes health claims signaling to the FDA that the substance is a drug, the FDA will view it with great scrutiny.

Trademark Filing Services: To Use or Not to Use?

Trademark filing services, like Legal Zoom or Trademarkia, can be cost-effective solutions in some instances. But they may not be an ideal fit for cannabis companies, which face unique trademark and other legal issues. Trademark protection in the cannabis space requires nuanced, tailored advice, not a one-size-fits-all, quantity-over-quality approach. In determining your trademark protection needs, consider the following, which contrasts guidance available from a trademark filing service with what a firm offers.

Straining for Protection

Earlier this year, the company GG Strains gained national media attention when it was issued a trademark registration for the strain Gorilla Glue #4. (Not as much attention as GG Strains received a couple months later when it was sued by the actual glue company, but that’s a subject for another blog post.) A trademark registration, you ask? For a strain name? Not so fast—it was a Colorado state registration for GORILLA GLUE #4, and the Colorado Secretary of State also issued a registration for an accompanying design mark, both in Class 031, covering “medical cannabis, the specific Gorilla Glue #4 hybrid cannabis plant strain.” These registrations are surprising, given that as a matter of law, a cannabis strain name cannot function as a trademark.

Buds R NOT Us: Choose Your Trademark Wisely

Buds R NOT Us: Choose Your Trademark Wisely

In late August, Buds R Us, a small medical marijuana dispensary in Detroit, Michigan, received a cease and desist letter from counsel for Toys R Us, Inc., the international toy company, alleging trademark infringement. At issue are two marks—the word mark BUDS R US, and a design mark featuring a giraffe with bloodshot eyes smoking a cone joint. The marks are used in connection with cannabis and related goods.  The letter claimed that use of these marks by Buds R Us creates a likelihood of consumer confusion with the TOYS R US word mark and the design mark depicting Geoffrey the Giraffe, the Toys R Us mascot, both of which are used to sell toys. In response, Buds R Us decided to change its name and branding.

There are a few key lessons here for cannabis companies.

Searching For A (Law)Suit?

Avoiding Copyright and Trademark Infringement on the Internet

There are over a billion websites on the web. Although about 75% are inactive, a Google search suggests several hundred thousand are dedicated to cat videos. If you’re not in the cat entertainment industry, that still leaves tens of millions of websites containing words, logos, images, audio, or video that might seem perfect for your website or social media.

It’s tempting to repurpose content as your own. But beware—the internet is rife with infringement possibilities. Here are some common issues we’ve flagged to steer you clear of infringement. Keep in mind, the best course of action is to confer with counsel before you “borrow” content.

If You Forgot About In re Morgan, In re PharmaCann Is Here to Remind You

It seems every few months the Trademark Trial and Appeal Board (“TTAB”) revisits its precedential decisions, In re Morgan and In re JuJu Joints, which we summarized in previous posts.

Enter In re PharmaCann LLC, in which the TTAB again confirmed that to qualify for a federal registration, the use of a mark in commerce must be lawful and any goods or services the mark covers must not be illegal under federal law.

PharmaCann submitted federal trademark applications for PHARMACANN and PHARMACANNIS for “retail store services featuring medical marijuana,” and “dispensing of pharmaceuticals featuring medical marijuana,” both of which the Examining Attorney categorically refused as not in lawful use in commerce. The Examining Attorney also included in the record two articles discussing PharmaCann’s intention to operate a medical marijuana dispensary in Illinois, where PharmaCann is located and where dispensing medical marijuana is lawful.  

Fatal Assignment

A trademark assignment is a great option for a complete transfer of ownership rights in a trademark or service mark. An assignment can be useful when reorganizing an entity, acquiring someone’s else’s intellectual property, contributing your assets to a newly formed entity, or bringing all your intellectual property assets under one roof. However, trademark assignments must be valid to be effective. To ensure their validity, certain laws and steps must be followed, or serious consequences could occur.

Recently, an invalid trademark assignment resulted in the cancellation of a trademark registration. In Emerald Cities Collaborative, Inc. v. Sheri Jean Roese, the United States Court of Appeals for the Federal Circuit resolved a dispute hinging on whether Emerald Cities Collaborative, Inc. had a valid assignment from the prior owner for the mark THE EMERALD CITY. The previous owner was an individual unconnected to the company. Even though the assignment agreement indicated plainly that the assignment would become valid only after the mark registered, the Court affirmed the Trademark Trial and Appeal Board’s ruling that the assignment was improper and the mark should be canceled.