Using Your Brand Name as Intellectual Property in Cannabis

In recent times many cannabis outlets have found themselves in a legal spotlight over their choice of brand name or trademark. As the marijuana industry becomes more mainstream, these issues will become more contentious, so it is essential that you pay particular attention to intellectual property rights and the selection of your branding identity.

Ownership of your trademarks

Your enterprise must own its trademarks as it would its premises, machinery, and equipment. A trademark is so important as it brings extrinsic value and organizational identity.

At this time, in the US, trademarks for cannabis enterprises are only protected by state legislation, but this should not stop you from selecting your trademarks based upon Federal regulations. Look to the future as this industry will have federal protection at some time in the years to come, so be prepared for it now.

Importance of trademarks

Your trademark will become the symbol that will identify your organization in the future, so spend time and choose wisely on one of your most valuable assets. If you do not understand the legal implications of the five classes of marks, under U.S. trademark law, then rather get professional help.

The strongest trademarks that can be protected are known as fanciful marks. After fanciful marks, the highest to least protected trademarks are arbitrary marks, then suggestive marks, then descriptive names and then generic marks.

Avoiding the legal minefield when developing trademarks takes professional help and creative minds, so spend wisely and invest in that help. The mark and brand name will help differentiate your organization from your competitors, so it is vital that they are carefully chosen.

Fanciful trademarks

The marks that have the greatest protection under the law are those that are made up and have no meaning outside of the mark. The most popular examples of this are Kodak, Xerox and Exxon. This type of mark gives the most significant opportunity for a positive relationship between a trademark and its associated product or service, as the word has no negative connotation in language.

Think of a trademark as a valuable asset that has an invisible force field around it. This force field is its legal rights of protection. If it is registered, with the authorities, for a single purpose or product (e.g., a tincture or extract) within a single class of goods (e.g., medical marijuana), then its right is restricted to that specific product within that specific class.

If it then gains in popularity and becomes well known, it can be registered for additional classes such as equipment, foods and drinks that will grow its intellectual property rights to cover more of the cannabis industry.

Legally this type of trademark has the most significant protection as there is no reason to use the word in any other way, except to describe this product.

Arbitrary marks

This type of trademark is when a word is used to describe a product that has no natural association with that product. The products that are most often used as examples are Apple for computers, Black & White for whiskey and Venus for pencils.

These trademarks are so well known that their invisible force field of rights extends way beyond the industry that they are intended for.

Suggestive marks

These trademarks draw on a characteristic or quality that describes the product but does not describe the product directly. The most often used example of this is Caterpillar, the manufacturers of heavy earthmoving equipment, where the word caterpillar describes the tracked machines crawling over the earth. Another good example is Greyhound which invokes an image of the bus speeding along a road.

Descriptive marks

The registration of descriptive marks makes them both difficult and expensive to defend. For example, descriptive terms like ‘Quick Service’ or ‘Bed & Breakfast’ are ubiquitous and will dilute the brand name within which they are used.

In rare cases, descriptive marks can be registered if they have been in the public eye for a long time and are entirely associated with one product. This cannot be the case in the cannabis industry, so steer clear of this type of mark.

Also, do not consider using your surname as a trademark. ‘Smiths Medicinal Cannabis’ will never be registered as a brand name as you cannot own your surname (hundreds of other people have the same surname) and the product medicinal cannabis cannot be owned by one organization.

Generic marks

These marks are useless in terms of trying to differentiate yourself from the crowd. You cannot own any of the words such as ‘marijuana,’ ‘cannabis,’ ‘medicinal marijuana,’ ‘CBD,’ ‘THC,’ ‘grass,’ ‘weed,’ or ‘oil.’

Check your facts

Once you have selected a brand name and your other trademarks, you need to check and make sure that they are not already in use elsewhere or that they are not similar to another set of trademarks that you may be in for a legal fight. This search is undertaken by a qualified person and ensures that you can use the marks without legal issues.

An example of this not being done is when the cannabis strain breeder, Gorilla Glue was sued by Gorilla Glue who manufacture liquid adhesives for breach of trademark. Searching nationwide will prevent this type of issue arising.

Your trademarks are a vital component of your fledgling organization, and with a little planning, some professional help and a search nationwide to ensure you are not going to be faced with a legal battle your trademarks will become a core asset that you can protect under the law.

This brand name and trademark will be the means by which the public identifies you and differentiates you from the rest leading to brand loyalty. That loyalty brings customers in time and again, which, in turn, leads to increased revenue and a competitive advantage over other organizations.

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