Experienced Lawyers for California Clients
In the highly competitive world of cannabis sales, having a recognizable name and brand is an increasingly important part of running a successful business. Consumers can often find it hard to differentiate between the many products available in the retail space, and will turn to brands they recognize, or that their friends recommend, as a safe option for purchasing.
While developing a strong brand reputation is vitally important, it is equally important for cannabis businesses to take the necessary steps to protect that brand name. If not, they may find that competitors are soon attempting to use that brand for their own benefit, or creating knock-offs to confuse consumers. One of the best ways to protect your brand is through the registration of your trademark.
How Do Rancho Cucamonga Cannabis Businesses Register Their Trademark?
Trademark registration is the process of having the federal government acknowledge your particular brand “mark” and determining that you are the official and exclusive owner of that mark for your particular industry. If another company then attempts to use your mark, or a similar mark, to market a product that is in the same commercial space as yours, you have legal recourse to stop them from doing so.
Trademark registration happens at the federal level through the United States Trademark and Patent Office, and as of January 1st, will happen with the California Secretary of State’s Office as well. Beginning in 2018, cannabis businesses may register their cannabis-related trademarks with the Secretary of State as long as they meet two important requirements:
First, the company must be lawfully using the mark in the commercial industry in California.
Second, the product a company is seeking to trademark falls within the current classification of good and services adopted by the USPTO.
Before rushing to get your application for registration filed with the California Secretary of State, it is important to understand exactly what these two requirements mean.
Are you Lawfully Using Your Trademark?
At the federal level, companies that develop a trademark for a product that they hope to start producing can file trademark registration applications called “intent to use.” This means that the company is seeking to register and protect a trademark that it plans to use in the future.
However, under California’s new law, companies may not seek “intent to use” registrations. Instead, the company must already lawfully be using the trademark in their commercial operations. This requires two things.
First, the cannabis company looking to register their trademark with the Secretary of State’s office must have already sold the goods or services that it wishes to trademark in California at the time of registration. Not only must the product be in existence, but the company must be actively marketing and selling it for a registration to be approved.
Second, the company must be doing so lawfully. Selling your product on black markets, under the radar, or out of your garage will not make the cut for trademark registration purposes. Instead, you must be able to prove that your business has acquired all relevant licenses and is fully in compliance with California regulations while selling the product for which you wish to register a trademark.
If you cannot meet either of these two requirements then the first step toward California trademark registration is:
to get your business up to speed in operating lawfully, and
get the product you are interested in protecting out into the market.
Do You Fall Within the USPTO’s Current Classifications for Goods and Services?
The second part of California’s trademark registration process requires that the product that a cannabis company is seeking to trademark falls within an existing USPTO classification.
When you register a federal trademark with the USPTO, you must identify the goods and/or services for which you are seeking a trademark. This is because your potential trademark must be compared to others within a similar industry to make sure that no duplication or overlap is occurring.
When trademark registrations are approved, they are approved for a provision of a certain category of goods and services. Their purpose is not to universally exclude anyone from ever using a similar context in any industry, anywhere in the world. This is why a trademark registration application must identify the goods and services for which the trademark will apply.
For instance, when Ben & Jerry’s registered their trademark, they likely described their goods and services as being related to ice cream and food sales. If another food company comes along and tries to use that name or a similar name for another food-related product, their trademark will likely be denied. However, if they tried to register Ben & Jerry’s to provide construction services, the trademark application may be approved.
The USPTO sets forth acceptable goods and services identifications in a manual that it updates on a yearly basis. Cannabis companies applying for California registration must be able to show which goods and services categories they fall within. While this will be easy for those companies providing more traditional services, like a retail store – it may be more difficult for those selling novel cannabis goods. A lawyer can help you review what classifications might apply to your product.
If you cannot identify an acceptable existing classification, it may be difficult to get a California trademark registration. The next few months will shed light on how California treats trademark registrations for those items that do not yet easily fit within existing USPTO classifications.
California Attorneys Assisting You With Trademark Registration
If you have a brand that has recently gained popularity, or which your consumers now regularly recognize or identify with, you should be considering trademark registration. With the opening of registration in California in 2018, now is the perfect time to consider your trademark options.
At CKB Vienna LLP, our attorneys can help you assess your options for trademark registration and whether you will be able to meet California’s new requirements. For more information, contact us online or at 909-980-1040.