Cannabis Trademarks in Legal Limbo: When Branching Out Puts Companies Out on a Limb

cannabis, trademarks

Trapped in a legal no-man’s-land between federal and state regulations, cannabis companies are going to increasingly great lengths to protect their brands. (And a lot of those brands have similar names, like Legion of Bloom and Bloom Farms, Emerald Pharms and Emerald Family Farms, or Canna-fill-in-the-blank.)

That’s because, as the Los Angeles Times reports, marijuana brands can trademark almost anything—except marijuana. Cannabis is now legal for recreational or medicinal use in 28 states, yet it remains illegal under federal law. As a result, the U.S. Patent and Trademark Office won’t register trademarks for marijuana retailers or products that contain cannabis.

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When you can’t trademark your cannabis brand products, the prevalent strategy is to trademark ancillary products in order to mark your territory in hopes of scaring away competitors from your future brand space.

“I call it the ‘circle the wagons’ approach,” says Todd Winter, a Costa Mesa, Calif., attorney who works with cannabis companies. “We get everything trademarked that we can, tangential to the actual cannabis product itself.”

One case in point is the cannabis brand “Hi,” which runs a Portland, Ore., marijuana shop and markets cannabis products like Hi Releaf pain-relief balm. In order to stake their claim to their brand name and naming rights for current and future products, Hi branched out into hawking branded apparel like hats and T-shirts.

Similarly, stoner comedian Tommy Chong’s brand, Chong’s Choice (which sells a line of pre-rolled marijuana cigarettes), has applied for a trademark for vaporizers and “tobacco” jars.

TRADEMARK: USE IT OR LOSE IT
But is a maker of good cannabis products necessarily a good apparel marketer or vaporizor manufacturer?

It’s an iffy proposition and a threat to cannabis brands, according to Alison Malsbury, an attorney who specializes in cannabis trademarks. If customers love a company’s weed but not its other products, the company could lose its trademark.

“The Patent and Trademark Office is looking for more than just token sales,” she says. “If you’re not continually using the trademark, it can be canceled and you can lose everything.”

For now, it seems that cannabis companies must jump through hoops to protect what they’ve built. And until the muddy waters between federal and state jurisdictions are clarified, one thing is crystal clear: Being a law abiding cannabis corporate citizen is much harder than it should be.

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