As of January 1st, 2020, 33 states have legalized medical or recreational marijuana. This is great news for cannabis companies. Now the bad news: Cannabis companies are still unable to obtain trademark protection on products and services that “touch the flower”.  

So, what should companies who produce and market these products do to prevent other companies from creating customer confusion with their established cannabis brand?  Can existing cannabis companies prevent dilution of their famous mark? Can cannabis companies prevent other companies from negatively affecting their brand by using similar marks on defective products and with substandard services?  Fortunately, and as shown below, the law provides avenues for cannabis companies to tackle these questions.

So, what’s the issue? 

As is well-known in the industry, cannabis products (and services that touch the same) that contain at least 0.3% tetrahydrocannabinol (“THC”) on a dry weight basis are still listed as a Schedule I drug under the Federal Controlled Substances Act (“CSA”).  As such, the sale of such goods and services is not lawful under federal law. Since a lawful sale of the goods and services listed in a trademark application must occur in order to obtain a registered U.S. trademark and any sale of products containing at least 0.3% tetrahydrocannabinol (“THC”) on a dry weight basis is unlawful under the CSA, the Trademark Office must deny registration of any trademark that lists such goods, or services that touch the same, in the application.  

For large cannabis companies, this can translate to increased risk and costs if protection isn’t properly sought. 

Related: What Tom Brady, LeBron James & Ohio State University Can Teach You About Advanced Trademark Laws

Strategies for Cannabis Companies

Despite the limitations to federally protecting your cannabis brands, cannabis companies should consider implementing one or more of the following brand protection strategies: 

Use the 2018 Farm Bill

The 2018 Farm Bill removed hemp-derived products, including CBD, from the list of controlled substances, legalizing its sale. Companies can now obtain federal trademark protection for products and services that contain cannabis having less than 0.3% THC by weight.  If you’re a cannabis company that sells products or services for products containing THC above this limitation, you should consider also providing products and services for products that fall under this boundary.  Doing so will enable you to obtain protection for your valid products.  Such protection will also help you to prevent others from selling Schedule I products and services under a confusingly similar name in jurisdictions that allow such sale under state law.  Furthermore, if and when this 0.3% THC limitation is raised or eliminated, your valid registration may legally extend to products that contain greater amounts of THC under the “zone of natural expansion”.  Besides taking advantage of this new law, if you’re a cannabis company and your products or services currently have a THC level above the allowed amount, you should also be… 

Trademarking Other Products 

This is similar to the 2018 Farm Bill recommendation above, except that you should be seeking to protect your mark in association with products and services that either do not include cannabis at all, and/or are at least not “touching the plant.”  Protecting your brand for these non-cannabis goods and services can be helpful to prevent others from using a similar mark for related goods and services. Depending on the nature of these goods and services, your registration may extend to cannabis products as well.  

Under this strategy, a U.S. trademark registration was recently obtained for a product/service in the cannabis space that’s not directly related to the sale of Schedule I marijuana.  Tökr is an app that allows consumers to search for prices and product information on both medical and recreational marijuana dispensaries. Even though Tökr’s registration documents mention marijuana, Tökr was able to obtain a registration because it was only providing services and products related to advertising and was not actually selling, providing, shipping or otherwise “touching” Schedule I cannabis. 

In another example, when the owner of the domain created a mark for their cannabis products and delivery/logistics services that included a similar shield logo as the registered United Parcel Service (“UPS”) shield logo, UPS was ultimately able to obtain a permanent injunction against the company.  By arguing that the infringing mark and other marks created irreparable harm against various UPS brands, UPS was able to prevent the infringing company’s use of not only the infringing shield but also of numerous domains and other marks. Similar cases involving Tapatio hot sauce and Gorilla Glue claimed brand dilution and irreparable harm and resulted in marijuana products with similar names removed from sale.


So… if you don’t have any other products to register (or even if you do), you need to:

Obtain State Trademark Registrations 

OK, first the downside:  If you intend on providing your flower-touching product or service in all of the states that allow for at least some legal marijuana consumption, you should obtain protection for the brand and/or logo under which you will be providing your goods or services in no less than 33 states.  Done properly, this will entail understanding what rights are associated with filing for a state trademark in each state, how to enforce those rights, and what is required to maintain those rights. That not only takes a lot of time, but also you need a legal expert to ensure compliance with each state’s requirements.  For example, in some states, like Colorado, even with a state trademark registration, protection for your mark is only provided to the geographic areas in which you are actually selling/using your product. So, if you’re only selling it along the Front Range, you’re only protected in that area. On the upside, however, there are states where registration breaks across the entire state, regardless of the scope of use for your mark. Depending on your situation, you may want to adjust your protection scheme accordingly.  Even with the limited protection in states like Colorado, however, a state trademark registration may provide others notice of your registration and may discourage attempts to use and register a similar mark in that state, in other states, nationally, or internationally. Until federal legalization of marijuana occurs, seeking state trademarks should be an arrow in every cannabis company’s IP quiver.   


Cannabis companies should also…

Consider Global Protections 

Given that there are over forty countries that have legalized medical marijuana and around half a dozen that have either fully legalized the sale of marijuana (e.g. Canada) or have certain restrictions on the sale (e.g. Australia), you should at least consider whether it makes financial sense for your company to seek protection of your brand in these foreign jurisdictions, and others.  


Finally, cannabis companies should certainly –

Leverage Additional Available IP Protections 

Artistic designs and web content on a brand can be submitted for copyright registration.   Along these lines, the look and feel of your product packaging should be analyzed for unique protection aspects.  Furthermore, design and utility patents can be obtained for unique product shapes or for unique features or methods of use.  

After taking into account the above protections available for cannabis companies, the bottom line is that there are numerous ways to protect your company’s brand and unique IP, regardless of the space you’re in.  In some instances it may be difficult, but not impossible, to protect brands against third parties attempting to trade off the goodwill you’ve established in the marketplace and against deceptive practices and unfair competition. You have to keep all of these avenues open as you move forward launching your product globally. 

Related: Yes, You Need a Registered Copyright

The Future for Cannabis Companies

A change in federal trademark law for cannabis companies is solely dependent on a change in the federal legal status of cannabis. There is a current push from the public, the media, and congress to remove marijuana from its classification under the Controlled Substances Act. But when, or even if, that will happen is still an open question. Regardless, barring any negative press or the release of new facts about marijuana use, companies should prepare for its removal while ensuring continued protection until that date.  By utilizing the protections described herein cannabis companies can ensure the brands are not only protected, but thrive.