Branding is Everything
We’ve all heard it before, “branding is everything.” Branding, as a term of art, is conceptually elusive but is a word meant to capture the meta-idea and purpose behind a company. Simply, the company’s “brand” is the totality of its beliefs and values. How a company chooses to express its “brand”, of course, varies according to objective of each company but on the most fundamental level, a business lays the framework of its branding infrastructure with a company name and logo. As the company grows and its name and logo become more ubiquitous and recognizable in the marketplace, the company may choose to protect its proprietary rights to use that name and logo with a trademark.
Cannabis businesses, like all businesses, must work tirelessly to develop and promote their brands. The more well known and respected is their branding – and by extension – their trademarks, the more the company will grow and engender trust in prospective buyers. Consider for example the experience of a consumer entering a smoke shop for the first time with the purpose of purchasing a vaporizer. He has already researched several different vaporizer companies but has not yet decided on the particular vaporizer that he’d like to purchase. To his immense frustration, upon scanning the shelves, the sheer number of options overwhelms him. Which one to choose? Suddenly, this cannabis novice recognizes a famous company’s logo on one particularly interesting looking vaporizer and he immediately imputes to that vaporizer a series of warm and positive attributes that the individual has come to associate with this well regarded vaporizer company. A sale has been made and the company has gained a new customer.
What than is a trademark?
Well, a trademark is nothing more than a vehicle for an individual to identify and characterize the source of the product on which the trademark is attached. Trademarks can quite literally make or break a company – contact a marijuana lawyer to make sure you are registering the mark correctly.
Broadly speaking, trademarks can be acquired in one of three ways;
- Through common law where merely using the mark in commerce grants proprietary ownership over the mark in a small, geographically constrained manner.
- Through registering the trademark in a State registry, granting proprietary ownership of that mark within that state.
- Through registering the trademark in the United States Patent and Trademark Office, granting proprietary ownership of that mark throughout the country.
A full examination of each one of these routes is beyond the scope of this article however as a general matter, it is sufficient to understand that trademarks can only be obtained on marks that are distinct and can legally be sold in commerce. Recall, the ultimate purpose of obtaining a trademark is to successfully mount a case against a competitor guilty of trademark infringement.
Federal Marijuana Trademark
In regards to federal trademark filings (which offer the greatest scope of protection), cannabis is of course still federally illegal and cannot be legally sold in commerce, rendering “cannabis trademarks” ineligible for trademark protection. What can a cannabis company do to protect its mark? Recognizing this sobering reality, cannabis companies typically choose to file their trademark in a State that has a legal marijuana program. This way, their brand is at least minimally protected within that State. Unfortunately, until Jan. 1 2018, California stubbornly refused to grant trademarks for cannabis related marks as it followed the “must be legally sold in interstate commerce” standard of the federal trademark law. This gap in protection has historically posed huge challenges for California based cannabis businesses who desperately needed but were precluded from obtaining trademark protection on their names and logos.
I am happy to report, all of that has now changed. As of Jan. 1 2018, cannabis businesses may register their marijuana related trademarks with the California Secretary of State’s office as long as;
- The mark is legally in present use in commerce within the state of California; and
- The specification of the classification of goods and services is aligned with the classification of goods and services covered by the United States Patent and Trademark office.
The Fine Print
Critically, California will only admit applications that are legally using the mark in commerce at the time the application is submitted. This detail is important to be aware of as the California Secretary of State will not permit an “intent to use” application (allowing registration of the mark first and use in commerce later) which is permissible under the Federal trademark application.
Progress is a blessing and as the cannabis industry continues to grow, it is both inspiring and relieving to see California gradually acclimate to the new reality of a Cannabis-sanctioned state. Cannabis businesses; start your engines.