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.

Varietal or cultivar names—i.e. strains—are generic names for plants or seeds. Generic terms are not protectable as trademarks or registrable on either the Principal or Supplemental Registers with the United States Patent and Trademark Office (“USPTO”). Think of it this way: can grape growers protect the name cabernet and prevent others from identifying their grapes or wine as cabernet? No, they can’t, and that same principle applies to cannabis strains. Once a name is used to identify the thing itself—the strain—it is no longer identifying the source or the quality because anyone can grow that strain and call it that name, leaving consumers unable to rely on the growing, curing, trimming, and other techniques and practices used by different producers. This means there is no source identifying function and therefore the term is not acting as a trademark. True, there are many more cannabis strains than there are wine grape varietals, but this doesn’t change the underlying principle.

So why would someone at the Colorado Secretary of State grant these GORILLA GLUE #4 registrations? Well, no one did, really. Unlike at the USPTO, state trademark offices often do not have the resources to conduct a full review of each trademark application. As a result, in some states—including Colorado—applications are not reviewed at all, and a trademark registration is granted immediately upon submission of the application. In states like California, where trademark applications are reviewed in detail, a certificate of registration provides the trademark owner with a rebuttable legal presumption that the trademark is valid and enforceable. The same is not true in Colorado, where the registration serves only as evidence that it was filed.

So, while obtaining a state trademark registration for a cannabis strain may be possible in certain states, enforcement will be difficult. And at the federal level, the USPTO won’t issue a trademark registration for a cannabis strain because trademark registration requires that the goods be sold in interstate commerce, and the interstate sale of cannabis falls squarely within the prohibition of the Controlled Substances Act (“CSA”). As an administrative agency charged with executing the laws of the United States, the USPTO is unable to grant a registration that violates the CSA. Nevertheless, a strain is still protectable—for example, you may be able to obtain a patent or develop contract terms for use of your strain. Contact us for more ideas and information.