Friday, October 24, 2014

Trademarks for Marijuana Products

Following Maureen Dowd’s experience with edibles in Colorado, we’ve seen greater national interest in the Colorado marijuana market.  A larger audience brings greater scrutiny – resulting in July’s last-minute changes to the LCB’s rules regarding edibles, and bringing greater attention to the importance of the trademark in building a strong brand.  The first trademark infringement cases involving marijuana businesses surfaced this past spring in Colorado, including the Hershey’s suit, and the MED-a-Mint conflict.  These cases emphasize two different points:  first, the infringement of existing registered trademarks, and second, the role of a properly registered trademark in protecting a business’ interests in a contractual agreement.

Businesses in an emerging industry are in a position to experience even greater profit from time spent developing solid branding.  A good brand not only helps drive a product’s sales, but builds a platform for long-term growth.  Registering a trademark gives a business the means to protect its exclusive use of a brand, and protect its product’s market share from confusion with similar products.  A trademark can consist of words, names, symbols, devices, colors used in a distinguishing way, brands, logos, even audible signs, fragrances, or three-dimensional signs.  

If a trademark is being improperly used, a business may file a lawsuit to accuse another business of infringing upon their exclusive right to its use.  TinctureBelle, the defendant in the Hershey case, surely knew that their Ganja Joy and other chocolate bars were a bit close to the mark, but chose to produce these products as novelty items.  This only became an issue when the products became more visible through media coverage of Colorado’s emerging recreational market.  TinctureBelle changed their packaging, but a little too late to avoid Hershey’s suit.  We expect to see similar cases as other novelty items become more widely (and publicly) available through retail stores in Washington.   

The MED-a-mint case illustrates a similar use of the trademark to protect a brand.  When the contracted manufacturer changed the labeling and packaging of the MED-a-mint product, the business owner determined that the brand was being misrepresented.  Citing their registered trademark, the company filed a suit claiming a violation of contract that was causing damage to the company’s brand.

When preparing to market a new product or brand, a business will likely want to pursue a trademark. We strongly recommend seeking an attorney’s input during this process, and the KB Law Group provides this service for our clients.

The trademark search is among the first steps, to ensure that no similar trademark is currently pending or registered in the federal or state databases, or in established common law use.  Once a mark’s uniqueness is established, a business can either reserve the right to register it, or begin the process of filing for registration.  In most cases, a business must be actively using a mark prior to filing for its registration:  it must be printed on signs, marketing materials, packaging, or business correspondence.

Because of marijuana’s status as a federally controlled substance, federal trademark protections are not available through the United States Patent & Trademark Office (USPTO).  However, ancillary businesses that provide merchandising or produce non-marijuana products may be able to obtain federal trademarks. 

In order to protect a proprietary name or image, marijuana businesses may only acquire trademarks on a state-by-state basis, through the Secretary of State’s office.  Businesses wanting to secure a trademark over a larger geographical area will want to consider applying for trademarks in multiple states – which means vetting the desired name and image in all target states before developing the brand or submitting the first application.  As Alaska and Oregon prepare to vote on recreational marijuana this November, securing a regional (i.e. multiple state) trademark could be even more important.

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