State business owners offered no federal trademark protection on marijuana brands

Q&A with Rachel Blue

published in The Oklahoman | August 8, 2018

While the cannabis industry is known for its clever and distinctive brand names and logos — like “Dr. Releaf” in Colorado or “Budlandia” in Portland — so-called ganjapreneurs are out of luck when it comes to protecting those brands with a federal trademark registration.

In a business Q&A with The Oklahoman, intellectual property attorney Rachel Blue explained that federal trademarks can only be granted for goods and services that are in lawful use in commerce that Congress can regulate. Because marijuana is still considered illegal under federal law, it cannot be transported across state lines or national borders — the only type of commerce that Congress has authority to regulate.

Without a federal trademark, marijuana businesses cannot claim exclusive use of a mark, use the federal registration symbol, or sue alleged infringers in federal court for monetary damages. That’s why some have already started considering other options for protecting their brands, she said.

“Some cannabis capitalists have adopted the strategy of registering their marks for ancillary goods that might be sold along with the marijuana, like vaporizers, pipes and ashtrays, or might be used in plant growing or distillation, like grow lights and tents or infusion systems,” said Blue. “Others have considered filing copyrights on designs or artwork encompassing the name, relying on the copyright owner’s exclusive right to reproduce an image. Strategies like co-branding with legal products such as THC-laced beverages or food items may offer some protection, but for now, the USPTO still just says no to trademarks for marijuana.”

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