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.
Prior to filing a trademark application, conducting a clearance search is vital for selecting a strong mark, uncovering infringement risks, and assessing registrability. A trademark filing service clearance report is often superficial, usually revealing only identical matches without including potentially confusing similar marks. It also won’t include common law marks—often the only available trademark protection for cannabis companies—which are frequently used and can be a hidden source of conflict. Filing service search results are designed to rush you through to filing an application. Firm-generated search results, however, are comprehensive and intended to help you make the best decision, not influence you to click-through to a trademark application.
Applying to register a trademark for a cannabis company—whether or not the business is “plant-touching”—is tricky. To yield full coverage of goods and services (often across multiple classes) requires strategic planning. Given the transactional, limited nature of the interaction with trademark filing services, they are often unable to understand the full scope of a cannabis company and how strategic the recitation of goods and services must be. With a firm, the needs of a business are closely examined and trademark applications align with those needs.
Responding appropriately to inquiries from the United States Patent and Trademark Office
Shepherding a trademark application through the USPTO can be challenging, and it only gets more complex when applying for cannabis-related trademark registrations. Are you ready to defend your application? You could receive inquiries about the Controlled Substances Act or refusals for descriptiveness or confusing similarity. A trademark filing service may not be able to respond successfully. Additionally, if an application isn’t drafted properly from the start, you risk creating a non-retractable public record, perhaps implying that you’ve engaged in the sale of cannabis in interstate commerce. With a firm, advice is specific and time-tested, and applications are prepared defensively, with the goal of completely avoiding USPTO scrutiny.
Submitting evidence of use
If you are already using your trademark in commerce before seeking a registration, there are specific guidelines for submitting evidence of use. For cannabis applications, evidence submission is even more complicated. With a trademark filing service, you may not get the level of detail-orientation needed for appropriately submitting evidence. With a firm, you can expect personalized attention.
Although engaging a firm may be more expensive initially than using a trademark filing service, in the end it will almost always save you money. Imagine spending thousands of dollars on an application, finding out it has irreversible errors, and being forced to abandon it and start over. (It happens!) It’s worth your time to consider a firm for your trademark applications.